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UNIVERSITY 

OF  CALIFORNIA 

LOS  ANGELES 


SCHOOL  OF  LAW 
LIBRARY 


INTERLOCUTORY  MOTIONS 


IN   THE 


United  States  Patent  Office 


NOTES  TO 

RULES  96-97,  J  09,  J  22,  123, 

130  and  J  53. 


BY 

E.  J.  STODDARD 

'I  I 
(Detroit  Bar) 


Detroit 

KBY  &  STUBBS 

1908 


r 


Copyright 
E.  J.  STODDARD 


PREFACE 


These  notes  have  been  made  for  my  own  use  during  the 
last  fifteen  or  twenty  years.  It  is  intended  to  render 
readily  accessible  as  much  existing  material  as  possible 
on  questions  of  daily  practice. 

Of  the  weight  or  authority  of  a  dictum,  or  the  cor- 
rectness of  a  decision  or  its  applicability  to  present 
practice,  one  must  judge  in  each  case.  As  bearing  u]3on 
this  point  I  have  prepared  a  brief  historical  introduction. 

The  notes  are  themselves  in  the  nature  of  an  index, 
but  I  have  prepared  a  short  supplementary  index,  co 
nomine,  which  will  be  of  use. 

It  has  been  very  difficult  to  get  the  time  required  in 
preparing  for  publication.  The  surprising  accuracy  and 
efficiency  of  the  printers,  Messrs.  Eby  &  Stubbs,  have 
prevented  many  errors  which  would  otherwise  have  oc- 
curred. 

ELLIOTT  J.  STODDARD. 

Previous  experience  in  this  line  of  publication  makes 
me  expect  a  small  deficit.  The  advantages  I  hope  for 
are  to  increase  my  acquaintance  among  Patent  Lawyers 
outside  of  Michigan,  and  to  increase  my  business  as  an 
expert.  See  Title,  "Expert  Testimony,"  in  the  back  of 
this  Volume. 


DATA. 


Born  at  Seymour,  Conn.,  1859. 

Educated  in  the  Mechanical  Engineering  Course  of  the 
Sheffield  Scientific  School  of  Yale  College  and  Law 
School  of  Columbia  College  in  New  York  City  (Class  of 
1881). 

Earned  my  living  for  a  year  or  two  as  a  Mechanical 
Draughtsman,  thus  becoming  familiar  with  the  details 
of  machinery. 

Engaged  in  shop  work  as  a  Consulting  and  Superin- 
tending Engineer  for  about  six  years,  largely  in  experi- 
mental work,  involving  mechanics,  electricity  and  chem- 
istry. 

Have  written  a  good  deal  for  publication,  and  my 
writings  have  been  favorably  received.  See  ''Press 
Xotices"  in  back  of  this  volume. 

Have  been  instructor  in  a  local  lodge  of  the  National 
Association  of  Stationary  Engineers  for  a  number  of 
years,  and  for  two  years  a  member,  or  Chairman,  of  the 
National  Educational  Committee  of  that  excellent  organ- 
ization, to  which  Professor  Perry  wrote  from  England 
in  terms  of  the  highest  encouragement. 

About  twenty  years'  experience  in  Patent  Soliciting. 
For  a  number  of  years  I  have  been  frequently  employed 
as  an  expert  in  Patent  cases.  See  "Letters"  at  the  end 
of  this  volume. 

Member  of  the  Jury  of  Awards  on  Automobiles  at  the 
St.  Louis  World's  Fair,  Gas  Engine  Expert  to  the  Marine 
Jurv  and  afterwards  Chairman  of  the  latter. 


INTRODUCTION 

Since  the  general  revision  of  the  Rules  of  December, 
1879,  all  amendments  have  been  published  in  the  Official 
Gazette;  and  the  changes  in  the  various  editions  are 
noted  in  the  front  of  the  Rules  as  now  published. 

RULE  96. 

A  part  of  Rule  51  of  1878  reads  as  follows: 

*' Where  a  party  who  is  required  to  put  his  case 
in  proper  shape  for  the  purposes  of  an  interfer- 
ence delays  doing  so  beyond  a  reasonable  time 
specified,  the  interference  will  at  once  proceed. 
After  final  judgment  of  priority  the  application 
of  such  party  will  be  held  for  revision  and  restric- 
tion, subject  to  interferences  with  other  applica- 
tions or  new  references." 

Only  verbal  changes  were  made  in  1879. 

The  present  form  of  the  rule  had  its  origin  in  the  case 
of  Hammond  vs.  Hart,  decided  April  25,  1898.  (1898  C. 
D.  52.) 

The  correctness  of  this  decision  has  been  called  in 
question  in  a  pamphlet  by  Mr.  J.  H.  Whitaker  published 
by  the  Patent  Law  Association  of  Washington,  D.  C. 

The  edition  of  the  Rules  of  July  18,  1899,  reads: 

^'AVhenever  two  or  more  applications  disclose 
the  same  invention,  and  one  of  said  applications 
is  ready  for  allowance  and  contains  a  claim  to 
said  invention,  the  primary  examiner  will  notify 
the  other  applicant  of  such  fact,  furnish  him  with 
a  copy  of  the  patentable  claim,  and  require  him 
to  make  such  claim  and  put  his  case  in  condition 
for  allowance  within  a  specified  time,  so  that  an 
interference  can  be  declared.  Upon  the  failure  of 
any  applicant  to  make  the  claim  suggested  within 
the  time  specified,  such  failure  or  refusal  shall  be 
taken  without  further  action  as  a  disclaimer  of 
the  invention  covered  by  the  claim,  and  the  issue 
of  the  patent  to  the  applicant  whose  application 
is  in  condition  for  allowance  will  not  be  delayed 


6  INTRODUCTION 

unless  the  time  for  making  tlic  claim  and  putting 
the  application  in  condition  for  allowance  be  ex- 
tended u])on  a  ])roper  showing.  If  a  party  make 
the  claim  without  putting  his  a])pIication  in  con- 
dition for  allowance,  the  declaration  of  the  inter- 
ference will  not  be  delayed,  but  after  judgment 
of  priority  the  application  of  such  party  will  be 
lield  for  revision  and  restriction,  subject  to  inter- 
ference with  other  applications." 

(See  Eule  94  of  1879  quoted  below  as  to  suggestion  of 
claims.) 

Tn  Wolfenden  vs.  Price,  1898  C.  T).  87,  Commissioner 
Duell  said: 

''In  deciding  the  case  of  Hannnond  vs.  Hart  it 
was  my  intention  to  bring  about  a  practice  in  the 
Office  that  would  result  in  making  the  issue  of  an 
interference  both  definite  and  clear,  and  to  that 
end  to  cause  the  parties  to  the  proposed  inter- 
ference to  claim  substantially  the  same  patent- 
able invention  so  as  to  obviate  the  many  motions 
and  a]i]~)eals  that  have  unnecessarilv  arisen  in  the 
Office." 

RULE   97. 

Previous  to  the  Revision  of  December,  1879,  the  Pri- 
mary Examiner  was  required  to  notify  the  parties,  and 
in  the  Rules  of  1878  he  was  required  to  ''briefly  and  con- 
cisely define  the  interfering  subject  matter."  In  the  re- 
vision of  December,  1879,  this  rule  reads: 

"97.  When  an  interference  is  found  to  exist  and 
the  applications  are  prepared  therefor,  the  princi- 
pal examiner  will  forward  to  the  examiner  of  inter- 
ferences notices  of  interference  for  all  the  parties 
as  specified  in  Rule  102,  which  will  disclose  the 
name  and  residence  of  each  party,  and  that  of  his 
attorney,  the  date  of  the  filing  of  his  application, 
and,  if  his  case  be  a  patent,  its  date  and  number, 
the  date  of  its  application,  the  ordinals  of  conflict- 
ing claims,  and  the  invention  claimed,  which  shall 
be  clearly  and  concisely  defined  in  so  many  counts 
or  branches  as  may  be  necessary  in  order  to  in- 
clude all  interfering  claims." 


INTRODUCTION  7 

RULE  109. 

Rule  94  of  1879  reads  as  follows: 

''When  two  or  more  pending  applications  show, 
but  only  one  claims,  an  invention,  the  information 
2jrovided  for  in  Rule  97,  so  far  as  it  may  be  ap- 
plicable to  the  case,  will  be  sent  to  each  applicant 
not  claiming  the  invention;  and  if  any  such  appli- 
cant shall  within  the  time  limited  by  the  examiner, 
file  an  amendment  of  his  application  duly  claim- 
ing the  invention,  he  will  be  made  a  party  to  an 
interference  to    be   declared,    but   not    otherwise. 
"Whenever  an  interference  is  found  to  exist,  under 
Rule  93,  between  two  or  more  parties  claiming  an 
invention,  applicants  having  pending  applications 
showing,  but  not  claiming,  the  invention,  will  be 
furnished   with   the   information  provided   for  in 
Rules  97  and  101,  and  if  such  applicants  shall, 
within  the  time  fixed  for  filing  the  preliminary 
statements,  file  amendments  of  their  applications, 
duly  claiming  the  invention,   together  with  such 
statements,  they  will  be  made  parties  to  the  inter- 
ference, but  not  otherwise.     AVhen  a  patent  shows 
without  claiming,  an  invention  claimed  in  a  pend- 
ing application,  and  the  requirements  of  Rule  71 
have  been  complied  with,    the  patentee  will   be 
furnished   with   the  information   provided   for   in 
Rule  97;  and  if  he  shall,  within  the  time  limited 
bv  the  examiner,  file  a   reissue  application   duly 
claiming  the  invention,  he  will  be  made  a  party 
to  an  interference  to  be  declared:  but  otherwise 
he  will  be  excluded  therefrom,  without  prejudice 
to  his  right  of  reissue;  but  if  an  interference  is 
found  to  exist  between  other  parties,  he  will  be 
furnished  with   the  information  ])rovided  for  by 
Rules  97  and  101,  and  if  he  shall  file  his  prelim- 
inary statement,  together  with  a  reissue  applica- 
tion claiming  the  invention,  within  the  time  limit- 
ed for  filina*  such  statements,  he  will  be  made  a 
partv    to    the    interference,    l)ut    not    otherwise. 
(See  Rules  74  and  171.)" 


8  INTRODUCTION 

RULES  122  AND  124. 

The  Revision  of  December  1, 1879,  reads  as  follows : 

"IIG.  Motions  to  dissolve  an  interference 
wliicli  deny  the  patentability  of  an  applicant's 
chiini,  or  his  right  to  make  the  claim,  will  be 
submitted  to  the  examiner  of  interferences  before 
the  day  fixed  for  filing  the  statements  provided 
for  in  Kules  97  and  102,  and  will  be  transmitted  by 
him,  with  the  files  and  papers,  to  the  primary  ex- 
aminer, who  will  take  jurisdiction  of  the  case  for 
the  determination  of  such  motions,  and  will  return 
the  files  and  papers  to  the  examiner  of  interferen- 
ces, with  his  decision,  at  the  exiDiration  of  the  time 
limited  for  appeal,  if  no  appeal  shall  have  been 
taken,  or  sooner  if  the  party  entitled  to  appeal  shall 
file  a  waiver  in  writing  of  his  right  of  aj^peal;  and 
such  decision  will  be  binding  on  the  examiner  of 
interferences  unless  reversed  or  modified  on  ap- 
peal. From  a  decision  of  the  primary  examiner  on 
such  motion  denying  the  patentability  of  a  claim  or 
the  right  of  an  applicant  to  make  it,  an  appeal  may 
be  taken  ex  parte  to  the  examiners-in-cliief ;  but 
from  liis  decision  affirming  its  patentability  or  the 
ai)plicant's  right  no  appeal  can  be  taken." 

"118.     Appeal  may    be  taken    directly  to  the 

commissioner    from     decisions    on     all    motions, 

except  motions  to  dissolve  interferences  denying 

the   patentability  of  aj)plicant's  claims,   or  their 

right  to  make  the  claims,  and  other  lawful  motions 

involving  the  merits  of  the  case,  which,  when  ap- 

l)oalable  may  be  appealed  to  the  board  of  the  ex- 

aniiners-in-chief.     (See  Rule  116.)" 

See  Allen,  Commissioner  of  Patents,  vs.  The  United 

States  of  America,  ex  rel.  Lowrv  and  Planters  Compress 

Company,  1905  C.  D.  643—116  0^.  G.  2253  (May  21,  1895). 


RULE  123. 

See  case  cited  under  Rules  122-121  above. 
Rule  117  of  1879  reads: 

''Motions  to  dissolve  an  interference  upon  the 
ground  that  no  interference  in  fact  exists,  or  that 


INTRODUCTION  9 

there  has  been  such  irregularity  in  declaring  the 
same  as  will  preclude  the  proper  determination 
of  the  question  of  ])riority  between  the  parties, 
and  all  other  lawful  motions  except  those  men- 
tioned in  Rule  116,  will  be  made  before  the  tribunal 
having  jurisdiction  at  the  time.  Such  motions 
should,  if  practicable,  be  made  before  the  taking 
of  testimony,  and  it  must  always  appear  that  they 
are  made  in  good  faith,  and  immediately  after  the 
discovery  of  the  grounds  on  which  they  are  based. 
If  grounds  for  such  a  motion  are  discovered  at  a 
time  when  it  cannot  be  properly  made,  they  may 
on  due  notice  be  urged  at  the  hearing  before,  and 
will  be  disposed  of  by,  the  tribunal  considering 
the  case,  as  i)rovided  in  Rule  120." 

Rule  59  of  1878  reads  in  part  as  follows: 

''59.  After  the  declaration  of  the  interference 
and  before  the  time  for  filing  the  preliminary 
statements,  has  expired,  motions  to  dissolve  the 
same  on  the  grounds  of  lack  of  novelty,  or  that 
no  interference  in  fact  exists,  or  that  there  has 
been  such  other  irregularity  in  declaring  the  same 
as  will  preclude  the  proper  determination  of  the 
question  of  right  between  the  parties,  must  be 
made  before  the  examiner  by  whom  the  inter- 
ference was  instituted.  After  the  declaration  of 
interference  such  motion  must  be  made  before  the 
tribunal  having  jurisdiction  at  the  time.  Appeal 
may  be  taken  to  the  commissioner  in  per;' on;  but 
if  the  examiner  should  decide  that  the  subject- 
matter  is  not  patentable  in  view  of  the  state  of 
the  art  the  interference  will  be  dissolved,  and  the 
matter  decided  upon  can  'be  proceeded  with 
ex  parte. 

RULE  126. 

Rule  120  of  1879  reads: 

"120.  In  their  decision  of  the  question  of  prior- 
ity, or  before  such  decision,  the  examiner  of  inter- 
ferences and  the  examiners-in-chief  will  direct  the 
attention  of  the  commissioner  to  any  fact  not  re- 
lating to  pi'iority  which  may  have  been  brought 
to    their   notice    (by    motion    or    otherwise),    and 


10  INTRODUCTION 

wliicli  ill  their  opinion,  amounts  to  a  statutoi'V 
bai-  to  the  grant  ol*  a  ]»atiMit  to  either  of  the  par- 
tics  for  tlie  claim  or  chiims  in  interference. 

Tlie  commissioner  may,  befoi'c  Judgment  on 
the  (juestion  of  })riority  of  invention,  suspend  the 
interfei-ence,  and  remand  the  case  to  the  primary 
examiner  for  the  consideration  of  the  statutory 
l)ar  so  sui»',i>-ested,  sul)ject  to  appeal  to  the  ex- 
aminers-in-chief, as  in  other  cases.  If  the  case 
shall  not  be  so  remanded,  the  primary  examiner 
will,  after  ,iudgment,  consider  and  determine  the 
same,  unless  it  shall  have  been  i)reviously  dispos- 
ed of  by  the  connnissioner." 

T7ule  59  of  1878  reads  in  part  as  follows: 

"In  tlieir  decision  of  the  question  of  priority, 
or  before  such  decision,  the  examiner  of  interfer- 
ences, or  the  examiners-in-cliief,  as  the  case  may 
be,  will  direct  the  attention  of  the  commissioner 
to  any  fact  not  relating  to  priority  which  may 
have  come  to  their  attention  (by  motion  or  other- 
wise), and  which,  in  their  opinion,  amounts  to  a 
statutory  bar  to  the  grant  of  a  patent  to  either 
or  both  parties.  After  final  judgment  the  primary 
examiner  will  consider  and  determine  any  such 
matter  not  i)reviously  disposed  of  by  the  commis- 
sioner." 
I  find  no  jirovision  in  the  Eules  of  Sei^tember  1,  1873. 

RULE   130. 

See  Podlesak  and  Podlesak  vs.  Mclnnerney,  1906  C. 
D.  558;  120  O.  G.  2127  and  cases  referring  to  it,  especially 
United  States  of  America  ex-  rel.  The  Newcomb  Motor 
C'ompanv  v.  Moore,  Commissioner  of  Patents,  133  0.  G. 
1680. 

RULE  153. 

Rules  of  December  1,  1879 : 

"MOTIONS." 

"1-1-9.  In  contested  cases  reasonable  notice  of 
all  motions  and  copies  of  motion  papers  and  affi- 
davits, must  be  served  as  provided  for  in  Rule  150 
(2).  Proof  of  such  service  must  be  made  before 
the  motion  will  be  entertained  by  the  Office;  and 
motions  will  not  be  heard  in  the  absence  of  either 


INTRODUCTION  11 

party  except  upon  default  after  due  notice. 
Motions  will  be  heard  in  the  first  instance  by  the 
officer  or  tribunal  before  whom  the  jDarticular 
ease  may  be  pending;  but  an  appeal  from  the 
decision  rendered  may  be  taken  on  questions  in- 
volving the  merits  of  the  case  to  the  board  of  ex- 
aminers-in-chief; on  other  questions,  directly  to 
the  commissioner.  In  original  hearings,  on  mo- 
tions, the  moving  parties  shall  have  the  right  to 
make  the  opening  and  closing  arguments.  In  con- 
tested cases  the  i^ractice  on  points  to  which  the 
rules  shall  not  be  applicable  will  conform,  as  near- 
ly as  i^ossible,  to  that  of  the  United  States  courts 
in  equity  proceedings." 

In  1869  Rule  50  read  in  part  as  follows: 

"In  contested  cases  no  motion  will  be  heard  in 
the  absence  of  the  other  party,  except  upon  de- 
fault after  due  notice;  nor  will  a  case  be  taken  up 
for  oral  argument  after  the  day  of  hearing  except 
by  consent  of  both  parties.  If  the  engagements  of 
the  tribunal  before  whom  the  case  is  pending  are 
such  as  to  prevent  it  from  being  taken  up  on  the 
day  of  hearing,  a  new  assignment  will  be  made, 
or  the  case  will  be  continued  from  day  to  day 
until  heard." 

And  Rule  57  of  1869  reads: 

"57.  If  either  party  wishes  the  time  for  taking 
his  testimony,  or  for  the  hearing,  postponed,  he 
must  make  application  for  such  postponement, 
and  must  show  sufficient  reason  for  it  by  affidavit 
filed  before  the  time  previously  appointed  has 
elapsed,  if  practicable;  and  must  also  furnish  hi? 
opponent  with  copies  of  his  affidavits,  and  with 
seasonable  notice  of  the  time  of  hearing  his  ap- 
plication." 

In  1870  the  following  rule  was  added: 

"MOTIONS." 

"50.  Reasonable  notice  of  all  motions  and 
copies  of  the  motion  ])a])ers  and  affidavits,  must 
be  sei-ved  upon  the  <)pi)osite  j)ai-tv  or  his  attor- 
nov." 


12  INTRODUCTION 

111  1871  tlie  rules  read: 

"MOTIONS  IN  CONTESTED  CASES." 

"50.  In  contested  cases  reasonable  notice  of  all 
motions  and  copies  of  the  motion  papers  and  affi- 
davits must  be  served  upon  the  opposite  party  or 
his  attorney.  Proof  of  such  service  must  be  made 
before  the  motion  will  be  entertained  by  the  Office; 
and  motions  will  not  be  heard  in  the  absence  of 
either  party  except  upon  default  after  due  notice. 
Motions  will  be  heard  in  the  first  instance  by  the 
officer  or  tribunal  before  whom  the  particular  case 
may  be  pending;  but  an  appeal  from  the  decision 
rendered  may  be  taken  to  the  commissioner  in 
person. ' ' 


INTERLOCUTORY  MOTIONS. 


TITLE 

CD. 

O.G. 

Allen,    Com.    etc., 

V.    U.    S.    ex   rcl. 

Lowry 

et   al     

1905-643 

1905-238 

116-2253-2254 

117-277 

1905-555 

119-2521 

1906-563 

120-2129 

1906-120 

121-1348 

1906-125 

121-1350 

1906-225 

122-2688 

1906-228 

122-2689 

1906-292 

123-2973 
133-1188 
133-1682 

Allfrie  v.  Sower. 

1906  214 

122-2391 

Anderson  and  Dyer  v.  Lowry.... 

Anderson  v.  Vrooman 

Andrews  v.  Nilson 

Andrews  v.  Nilson ■ 

Annand  v.  Spalckhaver 

Anson  v.  Woodbury 

Anson  v.  Woodbury 

Arbetter  v.  Lewis 

Archer  

Armstrong 

Aston    

Atherton  and  Happ  v.  Cheney..  .. 
Auerbach  and  Cubing  v.  Wiswell, 

Autenrieth  and  Kane  v.  Sorensen. 

Auxer  v.   Pcirce,  Jr 

Bachman   v.    Southgatc 

Ball  V.  Flora 

Ball  V.  Rego 

Ballzley    v.    Secberger i... 


1899  230 

1900-60 
1900-66 
1901-11 
1906-295 

1904-291 
1906-717 
1900-172 

1901-212 

1901-234 

1877-4 

1877-49 

1880-69 

1877-49 

1877-4 

1880-69 

1902-161 

1891-191 

1895-18 

1906-161 

1904-294 

1904-7 

1904-461 

1906-62 

1904-269 
1905-298 

1905-289 
1905-503 
1905-120 


89-1861 
91-819 
91-1034 
94-224 
123-2975 
131-1687 
111-1038 
123-1667 
93-753 
97-2083 
97-2741 
11-243 
12-1 
17-394 
12-1 
11-243 
17-394 
99-1383 
57-696 
71-1615 
122-730 
111-1040 
108-289 
11. ',-284 
132-678 
120-2126 
131-359 
111-805 
117-2362 
117-2088 
119-1258 
115-1329 


14 


INTERLOCUTORY  MOTIONS 


TITLE 

CD. 

0.  G. 

Banigan   Co.   v.    Bloomingdale 

1899-224 

89-1670 

Banks   v.   Siicdiker ••.... 

1879-304 
1880-95 

16-1096 

Banks   v.    Snediker 

17508 

Barber  v.   Wood 

127-1991 

132-1588 

Barber   v.   Wood 

132-1588 

Barney  v.  Kellog 

1880-134 

17-1096 

Beardslce  v.  Moeslin 

1889-127 

1902-380 

46-1640 

101-1130 

1904-346 

111-2222 

Beatty 

1891-151 

1893-130 

56-^^1563 

05—751 

1894-46 

66-1596 

Bcciiman   v.    Southgate 

1904-269 

111-803 

Bechman  v.   Southgate •  • 

1906-270 

123-2309 

Bechman  v.  Southgate 

127-1254 

Bechman  v.  Wood 

1899  453 

1899-99 

89-2459 

87-1073 

1899-99 

87-1074 

•1899-102 

90-2295 

^ 

1900-408 

93-2320 

1899-459 

94-224 

1901-370 

95-1454 

1903-595 

104-1124 

1905-584 

114-1553 

1905-607 

114-2383 

1905-667 

117-278 

1906-274 

123-2309 
132-477 

B  cell  man  v.   Wood •  • 

1899-459 

89-2462 

1897-188 

81-2087 

1898-266 

85-1738 

1899-99 

87-1073 

1899-102 

87-1074 

1899-105 

87-1397 

1899-107 

87-1398 

1899-453 

89-2459 

1899-459 

89-2463 

1900-248 

90-2295 

1900-153 

93-3340 

1900-408 

93-3330 

1901--10 

94-324 

1901-350 

95-837 

1901-370 

95-1454 

1902-231 

100-231 

1903-595 

104-1124 

1904-489 

113-8511 

# 

1904-490 

113-852 

1905-584 

114-1553 

1905-606 

114-2383 

1905-667 

117-278 

1906-274 

123-2309 
127-1254 

129-2861 


INTERLOCUTORY  MOTIONS 


IJ 


TITLE 


CD. 


O.  G. 


Becker  and  Patitz  v.   Edwards. 

Becon  v.  Otis 

Behrend  v.  Lammer  v.  Tingley 
Bellows   V.    King 


1906-270 


Bender   v.    Hoffman. 


Benct  and  Alcrcic  v.   McClean. 


Benger  v.   Burson 

Benjamin  v.  Searle 

Berrye,  Kane  and  Stengard  v.  Hildreth.... 

Berry  v.  Fitzimmons 

Bigelow  V.  The  Commissioner  of  Patents.. 
Bissel  V.   Robert 


1906- 

1903 

1904- 
1904- 
1904- 
1905- 

1898- 

1899- 
1899- 
1899- 
1899- 
1900- 
1901- 
1901- 
1905- 

1901- 

1904- 
1902 
1892- 
1908- 
1902 


407 

328 

155 
177 
201 
•121 

262 

105 

107 

•169 

233 

137 

■11 

83 

704 

191 

394 

164 

97 

186 

1153 


Blackford  v.  \\'ilder. 


Blackford  v.  Wilder. .  .  . 
Blackman  v.  Alexander. 

Blackman  v.  Alexander. 
Blackmorc  v.    Flail 


1890- 

1891- 
1906 
1902- 
1903- 
1903- 
•1904- 
190.5- 
1905- 


77 

113 

304 

204 

■573 

406 

632 

12 

642 


1902-41 

1902-323 
1905-335 
1905-345 

1903-288 

1904-102 
190.5-164 
190.5-440 

1905-456 


123-1990 

129-^1267 

124  2536 

106  997 

110-310 
■110-860 
110-1429 
115-1330 

85-1737 

87-1397 
87-1398 
88-1526 
89-1862 
92-1197 
94-224 
96-844 
117-1800 

97-1595 

106-2018 

99-1384 

59-630 
122-1722 

99-863 
7-603  606 

51-1618 

56-804 
124-319 

99-2769 
104-580 
106-2292 
109-2173 
114-263 
116-1736 
127-1255 
127-3644 
129-2860 
130-660 
133-514 

127-1255 

132-678 

98-11281 

ioo-2;;83 

111-1939 
111-2221 

105-2059 

109^1336 

116-595 

118-2253 

118  2538 


16 


INTERLOCUTORY  MOTIONS 


TITLE 


CD. 


O.  G. 


Blcickmorc   v.    11  all 

IJlackinorc   v.    i  lall 

Blinn   v.   Gale 

Blue  V.  Power  v.  Owen 

Booth,  Booth  and  Flynt  v.  Hanan  and  Gates 

V.  Marshall  

Booth    •  • 

Bourne   v.    Hill,  Jr 

Brewer,  Tily,  Rehfus  and  Rchfus  v.  Demerel 
Briggs  V.  Conley 

Brill  and  Adams  v.  Uebelacker 

Brissenden  v.   Rocsch 

Brown  and  Taplin  v.   Bixby 

Brown  v.  Hodgkinson   

Brown  v.   La  Dow 

Brown    v.    Lindmark •  •  .  . 

Brown    v.    Stroud 

Bryant,  Wo'lcott  and  Davidson 

Bryon   v.    ^laxwell... 

Bundy  v.  Rumbarger 

Bundy  v.  Rumbarger 

Bury  V.  Thompson 

Byron   v.    Henry . 

Cammet    v.    Hallet 

Campbell  v.    Brown 

Card  and  Card •  • 

Carmichael  v.   Fox 

Carnell  v.   Glasgow  v.   Cook 

Carney  v.   Latimer 

Carroll    v.    Stahlbcrg 

Carter  and  Dwycr  v.  Perry  and  Dicky 


1905-561 

1906-46 

1906-114 

1906-216 

1906-533 

1879  174 

'1879-228 

1902-425 

1908-238 


1906 

1905 

1903- 

1903- 

1904- 

1902- 

1903 

1891- 

1908- 

1880- 

1904- 

1906 


699 

218 

158 

•291 

-102 

220 

440 

166 

290 

199 

93 

2688 


1906-145 

1903-230 

1900-142 

1900-94 

1900^143 

1900-94 

1901-93 

1904-41 

1892-42 

1903-178 

1900-176 

1891-154 

1904-383 

1903-177 
1905-193 
1906-32 
1905-481 

1904-331 

1875-111 

1876-44 
'1876-214 


119  2523 

120-90G 
121-101:5 
122—2392 
120-1477 

16-459 

16-72:; 

101  2076 

123-319 

128-1291 

120-1284 

116-2010 

104-1119 

105-2061 

109-1337 

99-2966 

118  2253 

131   1886 

123-2973 

18-1049 

109-1071 

122-2689 

127-1992 

129-480 

i:!  1-1 42  3 

121-2663 

105-499 

92  2001 

91-2210 

92-2002 

96-1037 

96-1038 

■108-799 

58-1255 
104-1895 
93-939 
56-1565 
112  499 
112-500 
104-1656 
116-1451 
120-901 
119-652 
1:52-1588 
111-1937 
8-518 

10-585 


INTERLOCUTORY  MOTIONS 


IT 


TITLE 


CD. 


O.G. 


Carty  v.  Kellogg. 


1896 

1890 
1901 
1904 
1904 

1905 

1905 

Cazin  v.  Von  Welsback i  1905 


188 

-83 


Carver   v.    McCanna 

Cory,  Gibhart  &  Martin  Jr.  v.  Blake}- 


Chambers  &  Mendham  v.  Tucker  et. 

Cheney  v.  Venn 

Christensen  v.  Xoycs  


Churchward  v.  Douglas  v.  Cutler 

Clement  v.   Browns  v.   Stroud 

Coleman  v.  Bullard  v.  Struble 

Coleman   v.    Struble 

Cole  V.  Zarbock  v.  Greene 

Collcy    V.    Copenhaven 

Collom  V.  Thurman 

Corey  v.    Eiseman    &   Misar 

Corey,  Gibhart  &  ^lartin  Jr.  v.  Blakey. 
Crawford    v.    Lichtenstein 

Croskey   v.   Atterbury 

Coulson    V.    Callendar 

Cramer   v.    Ilaak 

Cummins    

Cutler    V.    Riddell 

Curtis . 

Daggett   V.   Kaufman 


1877 
1903 

1900 

1900- 
1903- 
1903- 
1904- 
•1904- 
1904- 
1905- 


-132 

-284 

246 

116 

475 

32 

492 

201 

-212 
-372 
-393 
-108 
-111 
-174 
-577 


1903-389 

1905-189 


1906-461 
1905-40 

1903-39 

1905-194 

1903-415 

1906-201 
1903-116 

1892-230 

1903-446 

1896-437 

1898-146 
1899-148 
1903-321 
1904-132 

1902-395 

1902-352 

1905-61 

1903-310 

1901-147 


74-657 

73-285 

95-838 

109-2171 

111-1035 

117-599 
115-1328 
119  650 

11-1009 
123-1703 

90-223 

92-1 23.-) 
'106-1777 
106-2018 
109-1605 
109-1607 
110-858 
114-766 
132-1588 

106-2016 

116-1185 

125-1703 

•  128-2837 

132-1073 

125  992 

114-973 

132-845 

114-973 
116-1451 

107  268 
131-359 
122-2063 
115-1328 

61-1480 

107-835 

76-163 

84-1143 
88-1159 
106-768 
109-171 

101-1607 

101-220 

114  2090 

108  763 
97-189 

127-3641 

132-1588 
133-1188 


18 


INTERLOCUTORY  MOTIONS 


TITLE 


Davis  V.   Ocumpaugh  v.   Garrett 

Davis  V.  Swift 

Dctsch    V.    Looncn 

Dickinson  v.  Hildreth 

Dickinson    v.    Norris 

Dickinson  v.   Thibodeau  v.   Hildreth 

Dietz    ■  •  •■ 

Dilg    

Dinkcl  v.   D'Olier 

Dittgen   v.    Parmcnter 

Dixon  and  Marslr  v.  Graves  v.  Whittemorc. 
Dixon  and  Marsh  v.  Graves  v.  Whittemorc. 

Denton  et.  al.  v.   Riker 

Doble  V.  Eckhart  v.  Henty  Jr 

Dod  V.  Cobb 

Dorr  V.  Ames   &  Rearson 

Dow  V.  Benson   

Drawbaugh     

Drawbaugh  v.   Blake 

Du  Bois  and  ]\IcCloskey 

Dukesmith  v.  Carrington  v.  Farner 

Dunbar   v.    Tchellinger 

Duncan  v.  Westinghouse  Jr 

Dunn   V.   Halliday 

Dunker   v.    Rcist 

Duryea  &  White  v.  Rice 

Duryea  &  White  v.  Rice 

Duryea  &  White  v.  Rice 

Dunton  v.  Young  &  ^IcFarren 


CD. 


1903-130 

i<)0.")-:ui4 
1901-134 

1905-117 


1906-179 
1905-159 
1902-202 
1903-155 
1904-401 
1904-572 

1903-125 

1905-117 


O.  G. 


1902 

I90:i- 
1904- 
1876- 
1903- 
1903- 
1891- 
1883- 
1891- 
1898- 
1898- 

1880 
1906- 
1906- 

1906- 
1906- 

1894- 
1905- 
1905 
I'.iOB- 
1905 
1906 
i906 
1876 


15 

2:!6 

168 

232 

296 

476 

182 

17 

14 

-52 

■57 

142 
426 
99 

147 
■428 

12 

545 

533 

-J(U 
97 
172 
279 
-167 


103-1679 

iis-s:!7 

96-2409 

115-1328 
129-2835 
132-232 

131-2146 

132-681 

122-1397 

116-593 

99-2550 

104-852 

112-953 

113-2507 

'131-1687 

103-1164 

115-1328 

127-1993 

130-2374 

133-1188 

98-415 

105-744 

110-604 

10-826 

108-263 

107-1378 

57-693 

23-1221 

54-503 

83-743 

83-745 

17-1158 
125  348 
121-687 

121-2663 
125-348 

66-1005 
119-2236 
119-1925 
122-730 
115-803 
122-1395 
123-2627 

10-243 


INTERLOCUTORY  MOTIONS 


19 


TITLE 

CD. 

0.  G. 

Eastman  v.  Houston 

■1899-113 

1901-386 

87-1781 

95-2064 

1902-278 

100-934 

1903-210 

105-260 

1903-342 

106-1240 

Edison  &  Gilliland  v.  Phclp 

s 

1887-11 

38  539 

Egly  V.  Schulzc 

1905-237 

117-276 

131-1690 

Egly   V.    Scliulze 

1905-308 

117-2366 

Eichelberger  and   Hibner 

V. 

Dillon 

129  3161 

133-^1189 

Eninict   V.    Fullagar 

1906-386 

1905-52 

124-2179 

114-1551 

Eschinger  v.  Drummond 

& 

Lieberknecht . . 

1906-121 

121   1348 

Essex  V.  Woods 

1899-189 

1903-573 

89-353 

104-580 

Evans  &  Bussell  v.  Vose. 

1873-36 

3-180 

Pagan  v.  Graybill 

1906-115 

121-1013 

Fairbank  &  Saner  v.  Karr 

1905-476 

1904-503 

119-651 

113-1148 

Faure   v.    Bradley    &   Crock 
Cowles    

:r   V.    Cowles    & 

1888-120 

1898-3 

44-945 

82-185 

1898-26 

82-1419 

1898-49 

83-594 

1898-179 

84-1587 

1905-117 

115-1328 

Farnsvvorth  v.  A.ndrcws 

1876-3 

9-195 

Fay  V.  Conradson 

1893-129 

65-751 

Fclbil  V.   Oliver 

1900-150 

1902-309 

92-2339 

100-1975 

1902-315 

100-2175 
aOO-2384 

1902-565 

105-977 

- 

1903-618 
1904-387 

112-501 
1112-955 

T^ol^inp"  V     X^t^lsoti 

1906-77 

1906-118 

120-2445 

A.    \^  LJ  lll^       V.       ^^V-10*_^ii 

121-1347 

•1906-185 

122-1722 
130-2720 

Fclsincf  V.  kelson   

1906-118 

121-1347 

130-2720 

Fcnncll  v.  Rrown  v.  BorsL 

h, 

J>- 

1905-117 

115-1328 

Ferris   

1905  16 
1902  466 

114  541 

Fcssendcn  v.  Fottcr 

101   2823 

Fickingcr  &  I'>alke  v.  TluU 

'tl 

1904-177 

1905-121 

110  859 

ii5-i:;30 

Fickinger  and    lUakr   v.    il 

lie 

tt 

1904-360 

111-2492 

20 


INTERLOCUTORY  MOTIONS 


TITLE 

CD. 

O.  G. 

Finch  V.  Bailey  &  Talbot 

1883-69 
1905-399 

25191 

Fisher  v.  Dougherty 

118  1681 

Foglcsong  V.  lliitt  &  Phillips 

1892-200 

61-151 

1892-190 

60-190 

Forscland  v.  ^latthcxvs 

1891-237 

1899-413 

1902-399 

57  1720 

I'ostcr  V.   Autisdcl 

88-1527 

101-1608 

103-1684 

104-1124 

1903-227 

105-498 
105-977 

1903-158 

107-1097 
1109-1050 

1904-285 

111-1036 
112-958 

1905-380 

'M8-1072 

1906-148 

121-2664 
128-2839 

P^Qwd^;-}-  Y_   Beiitoii •  •  . . 

1880-39 

1898-265 

17-266 

85-1 7:i8 

4901-166 

97-1171 

1901-168 

97-1172 

Frank  &  Gutmaiin  v.  Alacwilliam 

1905-17 

1905-262 

114-542 

117-1165 

Frederick  v.   Frederick   &   Frederick 

1902-182 

99-1865 

1902-346 

100-3013 

1904-203 

110-1429 

1904-473 

113-551 

iM-ick    

1872-124 

1889-185 

1-574 

48-185 

Fuller  V.  Brush   . .' 

1879-329 

16-1188 

Fur  111  an  v.   Dean •  • 

1904-305 

1905-582 

111-1366 

114-1552 

1904-305 

111-1366 
132-477 

Gaily  V.  Burton 

1906-7 

120-325 

1906-300 

124-317 

Gaily    V.    Brand 

1904-488 

113-851     ' 

Garcia  v.  Pons 

1906-177 
1903-542 

122-1396 

Garrels  v.   Freeman  .  . .  •  • 

103-1683 

132-842 

INTERLOCUTORY  MOTIONS 


21 


TITLE 

CD. 

O.G. 

Garrison  w  Hubiicr 

1891-59 

1898-160 

54-1889 

84-1283 

1898-162 

84-1284 

1900-185 

93-1917 

■1901-17 

94-584 

1904-36 

108-797 

1904-101 

109-1336 

Giroud  v.   Abbott,    Giroud   and    McGirr.... 

1903-108 

103-662 

Gerdom  v.    Ehrhardt 

1905-163 

116-595 

Gibboney    

1903-249 
1894-51 

105-976 

Glidden  v.    Xoble 

67-676 

Gold  V.   Gold 

131-234 

Goodfcllovv  V.  Jolly 

1904   163 

110-602 

Goodwin   v.   Smith 

1906-257 

123-998 

131-1687 
131-2421 

Gordon  v.  Wentworth 

1906-52 

120  1165 

Goss  V.  Scott 

1901-80 

1901-222 

96-842 

97-2306 

1902-16 

98-415 

•1-902-236 

10.5-744 

1903-274 

105-1780 

1903-311 

106-763 

1904-320 

•106-767 

190.-5-219 

116-2010 

Gray   

1889  91 
1904-540 

46-1277 

Gray  v.  ^IcKenzie  v.  McElroy 

113-1968 

Green  v.  Siemens  v.  Hall  v.  Field 

1886-43 

37-1475 

1889-197 

49-130 

1901-211 

97-1837 

1893-15 

62-587 

Grccnawalt    v.    Marks 

1903-135 

103-1913 

■1903-404 

106-2291 

1903-406 

Greater  v.   Mathieu 

1904-264 

1904-380 

111-583 

112-254 

Griffith   V.   Dodgson 

1905-200 
1906-204 
1905  269 

116-1731 

Griffith   \'.   Dodgson 

122-2064 

Gueniffet,    Benoit   &   Xicault  v.   Wictorsohn 

117-1492 

134-255 

Hall    V.    Alvord 

1902-418 

101-1833 

1  904-2'.)  1 

1 11-1038 
130-1690 

Hall  V.   Latta •  ■ 

1892-113 

1902-229 

59-1431 

99-2970 

117-2632 

Hall   V.  Weber 

1904   112 

109-1607 

22 


INTERLOCUTORY  MOTIONS 


TITLE 


CD. 


O.  G. 


I  lammdiid   v,    I  lart 


Hansen     

Hansen  v.  Davis •  •  . .  . 

Harnisch  v.  Guenififet,  Benoit  &  Nicault 
Harnisch  v.  Gucniffet,  Benoit  &  Xicault 
Harrison   v.    Hogan 

Harrison   v.   Shoemaker 

Harvey    

Harvey  v.  Lubbers  v.  Raspillane 

HaupT    


1898-52 

1898-71 

1898-8:5 

1898-88 

1898-89 

1898-100 

1898-138 

1898-144 

1898-152 

1898-168 

1898-170 

1898-174 

1898-174 

1898-187 

1898-196 

1898-207 

1898-256 

1899-lG 

1899-37 

1899-42 

1899-67 

11899-111 

1902-6 

1903-573 

1903-351 

1903-373 

1904-290 

1904-310 

1905-314 

1891-72 

1893-109 

1905-271 


1880-191 

1887-53 

1901-409 
1904-129 

1903-21 

1905-167 

1904-411 

1906-138 

1901-153 

1903-107 
1904-410 


83-743 

83-1209 
83-1659 
83-1801 

83-1806a 

84-984 

84-1141 

84-1144 

84-1434 

84-1583 

84-1585 

84-1586 

84-1729 

84-1869 

84-2020 

85-1397 

86-490 

86-491 

86-1500 

86-1634 

87-180 

87-1607 

98-228 

104-580 

106-1502 

106-1777 

■111-1038 

111-1368 

120-2127 

117-2632 

55-998 

64-1006 

117-1492 
128-455 

18-921 

40-346 
40-348 
96-1040 

109-2120 

128-2837 

102-621 

102-622 
116-597 

112-1215 

121-2326 

97-192 

103-662 
112-1215 


INTERLOCUTORY  MOTIONS 


TITLE 

CD. 

0.  G. 

Hedges   V.   Daniels 

1880-9 

1880-64 

1903-320 

1905-98 

1904-515 

1905-24 

1906^175 

1906-174 

1906-450 

1903-123 

1903-250 

1887-40 

1892-74 

190.5-701 

1894-45 

1898-136 

189.3-56 

1902-413 

1901-186 

1903-347 
1903-476 

1901-236 

■1902-149 
1903-310 

1906-191 

1880-185 

1904-19 

1904-34 

1902-199 

1903-319 
1903-261 

1896-1 

1897-168 

1898-266 

1899-107 

1902-22 

1899-234 

1897-168 

17-152 

Hedlund  v'    Curtis 

17-394 
106-767 
11.5-803 

113-1419 

114-544 

Hess  V.  Joerissen  v.  Felbel 

114-545 
131-1419 

Hewitt  V    Steinmetz 

133-1188 
122-1396 

Hewitt  V.  Weintrauton,  Hewitt  &  Rogers.. 

Heyne,  Hayward  &  McCartliy  v.  De  Vilbiss 

Jr     

122-1395 
128-^1689 

125-669 

Hicks  V.   Costello 

Hicks  V.  Keating  v.  Purvis  &.  Bilgram 

Hillard  v    Eckert                          

132-232 

103-1163 

105-976 
132-1588 

40-343 

58-1840 
117-1799 
66-1596 
84-984 
63-464 

101-1831 

Hildreth    

Hinkley  v     Barker . 

97-1374 

106-1242 
107-1378 

97-2742 

Hirsch    Co.    v.    Jenner    v.    Hellert    Sons    v. 
Sample  &  Co 

Hockhausen   v    Weston 

97-670 
106-763 

122-1724 
18-857 

Hoefer,  Hoefer  &  Hoefer  v.  Barnes 

108-560 
108-797 

Holland     

Holz  V    Hewitt 

99-2548 
127-1992 

Hopfelt  V.   Read 

Hopkins  v.  Scott 

Hopkins  v    Hunter 

129-2501 
129-2857 

106-767 

105-1263 

74-653 

81-967 

85-1739 

87-1398 

98-417 

89-1862 

81-968 

24 


INTERLOCUTORY  MOTIONS 


TITLE 


Hornc  v.  Somcrs  Co. 
Ilornc  V.  W'ondc 


Horton  v.  Summcr 
House  V.  Butler. .  . 
Hulett   V.   Long. .  . 


C.  D. 


Hull  V.  Hallberg 

Huson  V.  Crovvell  v.  Yate.'^ 


Hutin   &   Leblanc   v.   Stcinmctz   v.    Scott   v. 
Fairfax    


Hutt  &  Phillips  V.  Foglesong. 


Ingoldsby  v.  Bellows 

Ingoldsby  v.  Bellows 

Jackson   v.    Cuntz 

Jackson  v.  Xichol 

Jenkins  v.  Barney  &  Berry 


Jcnne  v.  Brown  v.  Booth, 


Jenner  v.  Dickson  v.  Thibodeau.. 

Judd  V.   Campbell 

Kaczander  v.  Hodges  and  Hodges 


Kafer  &  Gould  v.  Dennison. 
Kane  v.  Brill  &  Adams 


Kelleher  &  Grumm  v.  :NLayhew. 
Keller  &  Olmesdahl  v.   Felder. 

Kempshall   v.   Royce ■ 

Kempshall    v.    Sieberling 

Kempshall    v.    Sieberling 

Kempshall    v.    Sieberling 

Kephart     


O.G. 


1900-152 

l'.)()4-490 

1893-14 

1808-218 

1899-446 

1901-369 

1905-607 

1905-697 

1904-200 

1893-107 

1899-185 

1901-393 

1901-240 

1903-219 

1892-190 

1898-168 
1899-9 

1904-554 

1905-229 

1905-92 

1871-278 

1873-19 

1892-78 

1905-14 
1906-7 

1905-180 

1904-232 

1905-361 

1905-530 

1869-14 

1898-146 


1876-246 

1903-169 
1903-428 
1904-197 
1903-137 


129-1609 
129-2858 

132-G78 
92-2339 

113-852 
62-587 
85-289 
89-1141 
95-1454 
114-2383 
117-1490 
110-1428 
64-1006 
88-2409 
95-2686 

97-2743 

105-264 
60-1477 

84-1434 

86-184 

113-2214 
116-2532 
115-510 

3-119 

7-605 

59-158 

114-264 

120-325 

116-1181 
110-2016 
118-836 

119-1924 

;   84-1142 
I  132-078 
I   72-895 
10-944 
I  129-3162 
104-1395 
107-541 
I  110-1427 
■    103-1914 


INTERLOCUTORY  MOTIONS 


TITLE 


CD. 


O.  G. 


Kilbourn  v.  Hirner. 


1906-161 

1906-307 


Kilbourn   v.    Hirner 1906-367 

King  V.   Babcndricr   v.   Libbcy 1899-252 

Kinney  v.   Goodhue 1906-264 

Kinsman    v.    Strohm 1906-481 

j  1906-64 

Kitsee    v.    Robertson I  1901-221 

Klein  v.  Groeble •  • i  1904-140 


Klepetko  v.  Becker 

Klepetko  v.  Becker 

Klepetko     

Kletzker  and  Goesel  v.  Dockon. 
Kletzker  and  Goesel  v.  Dodson. 


Knight  V.  Bagncll  v.  Curtis  v.  Morgan. 
Kohler  v.  Kohler  and  Chambers 


Kolb  V.   Hemingway  v.   Curtis. 

Krakaw    v.    Harding 

Kugele  V.  Blair 

Kugele  V.  Blair 

Kurz  V.  Jackson  v.  Pierce...-, 


Laas  &  Sponenburg  v.  Scott. 

Lake  v.   Cahill    

Lamb  v.  Warren 

Larter  v.  Jones 

Latour  v.   Lundell 

Lattig  and  Goodrum  v.  Dean. 
Law  V.  Woolf 


Lenip  V.  Randall  v.  Bates, 


1906-24 
1906-336 

1902-463 
1904-100 

1896-109 
1888-19 

1889-221 

1891-145 

1892-73 

1893-62 

1900-156 

1902-184 

1904-79 

1904-203 

1906-178 

1903-484 

1906-477 

1902-106 

1904-242 
1904-467 

1906-621 

1904-241 

1893-91 

1900-111 

1906-168 

1905-698 

1891-91 

1899-5 

1901-210 

1906-240 

1906-42 


122-729 

124-319 
128-1689 
124-1841 
131-1161 

89-2653 
123-16G3 
125-1699 
120-2127 

97-2306 
110-305 
1 10-308 
120-658 
124-908 
126-387 
101-2822 

109-1336 

110-308 

76-1115 
43-247 

49-1043 
56-1447 
58-1840 
63-612 
92-2508 
99-1865 
109-805 
110-1429 

122-1397 
107-1662 
125-1350 
127-1253 
98-2383 
110-2235 
113-548 

122-352 

110-2235 

64-437 

92-383 

122-1046 

117-1798 

55-1527 

86-183 

97-1837 

123-319 

120-905 


26 


INTERLOCUTORY  MOTIONS 


TITLE 


CD. 


O.  G. 


Lipe  V.   Miller. 
Lipc  V.   Miller. 


Lipscomb   v.   Pfieffer 

Little  V.  Lillie,  Pillard  &  Sargent 

Lizotte  V.  Neuberth 

Locke    

Locke  V.   Crebbin •  • 

I 

Lossier  v.  Wilson  v.   Cowles   &  Cowles  v 

Rogers  v.  Darling  v.  Bogusko  v.  Gratzel 

Lombard    •  • 


Lotterhand  v.   Hanson .... 

Lovejoy  v.  Cady 

Lowry    

Lowry  &  Cowley  v.  Spoon 


Lowry  v.  Spoon 

Luger  V.    Browning 

Lutz  V.   Lewis •  • 

Lynch  &  Raff  v.  Dryden  &  Underwood 

Lovrien  v.  Banister •  • 

Macey  v.  Tabey  v.   Laning 


1903-114 
1903-266 

1903-483 

1904-556 

1905-121 

1904-84 

1905-201 

1904-347 

1904-114 

1906-269 

1906-158 

1876-207 

1887-44 

1906-370 

1901  267 

1906-298 


1892-117 

1888-56 

1891-11 
1891-103 
1891-111 
1898-100 

1904-647 

1905-46 

1906-245 

1900-1 
1906-224 

1906-381 


1904-400 
1902-230 

1904-227 

1873-73 

1881-15 
1880-630 

1880-152 

1904-79 

1901-168 


109-1608 
105-1532 

107-1662 
113-2215 
115-1330 
109-1067 
116-1732 
111-2222 
109-1608 
131-2422 
123-1990 

122-351 

10-543 

40-344 
124-1842 

94-432 
124-317 

132-1588 
133-1188 

59-1605 

43-1347 

54-503 
56-139 
56-142 

83-1804 
83-1806a 

110-861 

114-1265 
132-842 

123-654 

•131-692 

90-445 

122-2687 

127-1992 

129-480 

124-1846 

128-457 

127-1992 

132-1588 

112-732 

100-231 

104-1123 

110-2014 

3-407 

■19-662 
18-794 

18-299 

109-805 

97-1172 


INTERLOCUTORY  MOTIONS 


27 


TITLE 


CD. 


O.  G. 


Manny  v.   Easlcy  v.   Greenwood  Jr. 


Marks  v'.  Grecnwalt.  .  .  . 

Marsh  v.  Dodge 

Martin  v.  Mullin 

Mattice  v.  Sangworthy 
McArthur   v.    Gilbert.  .  , 

AIcBerty  v.   Cook 


McBride    v.    Kemp 

McCallum  v.  Bremer , 

McChesley  v.   Kruger 

McGill  V.  Adams 

McKcc  V.  Baker 

McKniglit  V.  Pohle 

Mead  v.  Brown  . .  • • 

McKnight  v.  Pohle  v.  Crossdale 


1889-179 

1891-15 

1899-14 

1899-14 

1899-46 

1899-186 

1899-233 

1901-83 

1901-167 

1902-16 

1903-461 

1904-165 

1905-370 

1904-352 
1872-245 

1876-198 


1904-314 

1904-245 

1900-248 

1900-153 

1901-27 

1901-353 

1902-570 

1903-596 

1903-345 
1903-414 
1904-675 
1905-577 
1905-607 
1906-591 
1906-618 

1904-89 

1900-186 

1902-349 
1905-504 
1906-22 


1889  173 
1903  220 


48-538 

78-1904 
86-490 
86-491 
86-1636 
88-2409 
89-1862 
96-844 
97-1172 
98-415 
107-1098 
110-603 

118-1068 

111-2224 

2-643 
127-3216 
13.3-1189 
132-678 
132-1073 
111-1624 
110-2509 
133-514 

90-2295 

92-2340 
94-986 
95-838 
100-2386 
104-1124 
105-977 
106-1241 
107-267 
112-955 
114-766 
114-2383 
121-1351 
121-2668 

109-1070 

93-1917 

101-1833 

101-219 

119-1259 

120-657 

130-1092 

131-362 

130-2069 

132-1588 
48  397 

105  977 

119-2520 


28 


INTERLOCUTORY  MOTIONS 


TITLE 


Mechlin  v.  Horn,  Colclazer  and  Mungcr 


Medcn  v.   Curtis 

Mets  V.  Crane  and  Bloomfield 

Meucci    

Meyers  v.    Sarfert 

Meyers  v.  Tyden 

Meyrose  v.  Jahn 

Miel  V.  Young, .  .  • 

Miller    

Miller  v.  Lambert 

Miller  v.   Mann 

Miller  v.  Mann  v.  Bacon  v.  Torrance 
Miller  v.   Perham    


CD. 


1900-154 
1900-180 
1901-187 
1905-272 
190G-119 
1892-36 
1890-65 
1901-91 
1903-21 
1904-2 
1891-145 
1898-161 
1903-181 
. 1906-124 
1906-225 
1906-299 
1905-228 
1895-77 
1906-164 
1905-104 
1906-157 
1906-258 
1906-265 


O.G. 


Mills  

Mills  V.  Torrance 

Mills  V.  Torrance.. 

Moore  v.  Curtis 

Moore  v.  Curtis. 

Moore  v.  Heweth  v.  Potter 
Moss  V.  Blaisdell 

Munro  v.  Walker   

Myers  v.  Brown 

National  Phonograph  Co.. 

Xaulty  V.  Cutler 

Neth  V.  Tamplin  v.  Ohmcr 


1905- 
1903- 
1904- 
1906 
1906 
1906 
1904 
1904- 
1906 

1904 

1905 

1899 

1902 


677 
306 
172 
6 

136 
-89 
-519 
-568 
-200 

-445 

-489 

-221 

-571 


1906 

1905 

1905 

131 

1906 


1 

177 
-412 
-2419 

693 


92-2507 

93-1123 
97-1374 
117-1795 
121-1347 
58-947 
51-299 
96-1037 
102-621 
108-287 
56-1447 
84-1283 
104-1896 
121-1350 
122-2688 
124-317 
116-2532 
72-1903 
122-730 
115-1063 
121-2667 
123-998 
123-1663 
127-3217 
127-3641 
129-3161 
133-1189 

117-904 

106-544 

110-857 

120-324 

121-2325 

115-509 

113-1703 

113-2505 

122-2062 

112-2093 

119-962 

89-1669 

101-1133 

126-389 

120-323 

116-874 
118-1686 

123-998 


INTERLOCUTORY  MOTIONS 


29 


TITLE 


CD. 


O.G. 


Neuboeker  v.  Schafhaus , •  • 

Newcomb  v.  Lemp 

Nevvcomb  v.  Thompson •  ■ 

Newell   V.    Hubbard 

Newell  V.  Rose '. 

Newell  V.  Clifford  v.  Rose 

Newell  V.  Clifford  v.  Rose 

Newell  V.  Clifford  v.  Rose 

Newell  V.   Hubbard . .  • •  •  . . 

Niedringhaus  v.  Marquard  v.  McConnell. 


Niedringhaus  v.  Marquard  v.  McConnell... 

Niedermcyer    v.    Walton •  • 

Noble  V.   Sessions 

Norden  v.  Spaulding 

Normand  v.  Krummellein 

Oldham  and  Padbury  v.  Peck  v.  Clement  v. 

Richards    •  • 

Oliver   v.    Felbel 


1873-138 

1874-5-i 


Osborne  v.  Armstrong. 
Osborn  v.  Hotsapillar .  . 


1906-235 

1906-232 

1905-128 
1905-457 
1905-514 
1906-164 

1906-440 
1904-51 


1902-403 

1904-84 
1904-315 
1904-348 
1904-555 

1906-91 

1906-92 

1901-220 
1906-119 
1905-588 

1905-73 


1902- 

1902- 
1902- 
11903- 
1903- 
1903- 
1903- 
1903- 
190.3- 
1903- 
1904- 
1904- 
1905- 
1905- 
1906- 
11906- 


4-319 

4-314 


1904-412  '  112-1216 


122-3013 

122-3012 

115-1847 

119-337 

119-1583 

122-730 

129-2499 

125-665 

108-1053 

115-1847 
101-1610 

101-1610 

109-1007 
111-1624 
11 1-2222 
113-2215 

121-337 

121-338 

97-2306 
121-1348 

114-1828 

131-944 

115-249 


1902-148    99-670 


565 

309 
315 

■118 

■596 

618 

333 

345-6 

■393 

226 

304 

■578 

701 

92 

■591 


1905-65 

1903-47 

1903-393 
1904-36 


100-2384 

101-267 

101-2572 

102-1470 

103-890 

104-1124 

105-977 

106-1000 

106-1241 

106-2018 

110-2014 

111-1366 

114-766 

117-1799 

121-337 

121-1351 

127-3644 

131-1686 

114-2091 

102^1296 

100-2018 
108-797 


30 


INTERLOCUTORY  MOTIONS 


TITLE 


O'Shaughness  v.  Van  Dcpocle 
Owens  V.  Richardson,  Jr 

Paget  V.   Bugg 


Papendell  v.  Bunnell  v.  Rcizenstcin  v.  Guis- 
nian  v.  Gillette  

Patten   v.   Wiesenfeld    

Perrault    v.    Pierce 

Perrussel  v.  Wichmann 

Pfingst   V.    Anderson 

Pfingst   V.    Anderson 

Pfingst   V.   Anderson 

Phelps  V.  Wormley  v.  McCuilough 

Phillips  V.  Sensenich 

Podlesak  &  Podlesak  v.  Mclnnerney 

Podlesak  &  Podlesak  v.  Mclnnerney 


CD. 


Podlesak   &  Podlesak  v.   Mclnnerney 


1893-19 

1896-7:; 

1904-289 

11)04-290 
1905-3(>3 
1903-3GS 

1899-214 

1900-1  r)4 
1902-34G 
1903-2G1 


1902-114 
1904-73 

1902-228 

1904-315 
1904-324 
1905-92 
1906-138 

1905-13 

1905-240 

1906-138 

1903-368 

1905-374 

1905-538 

1906-170 
1908-558 

1905-358 

1906-125 
1906-184 
1906-225 
1906-228 
1906-266 


O.  G. 


Pohle  V.  McKnight 
Potter  V.  Mcintosh 


1906  265 


1905-549 

1906-162 
1906-307 

1905-195 


62-1063 

;>  I- 143(1 

111-1037 

1 1 1-1038 

118-837 
118-1067 

89-1342 

92-2340 
100-3013 
105-1263 
130-2720 

131-362 

98-2589 
108-2146 

99-2970 

111-1624 
111-1628 
115-510 
121-2326 

114-264 

117-597 

121-2326 

118-1067 

118-1069 

!■  19-2234 

122-1047 
120-2127 

118-835 

121-1350 

122-1722 

122-2688 

122-2689 

123-1989 

127-1994 

128-1690 

129-874 

130-1691 

130-2721 

131-1162 

131-1691 

123-1989 

127-^1996 
128-2533 
130-1691 
133-1682 
134-255 

119-2519 

122-729 
124-319 

116-1451 


INTERLOCUTORY  MOTIONS 


31 


TITLE 


CD. 


O.G. 


Potter  V.  Mcintosh  

Potter  V.  Mclntosli 

Potter  V.  Van  Vlcck  v.  Thomson 

Prindle  v.  Brown 

Pryor  v.  Ball  v.  Brand 

Pugh  V.  Hamilton 

Pym  V.  Hadaway 

Pym  V.  Hadaway 

Pym  V.  Hadaway 

Pym  V.  Hadaway 

Quest  V.  Ostrom 

Quimby  v.  Randall 

Raulet  and  Nicholson  v.  Adams.. 


Rayburn  v.  Strain 
Read  v.  Scott. .  .  . 
Reece  v.  Fenwick 

Recce  v.  Fenwick 


1906-56 

1906-183 
1906-273 


1906-183 

1906-307 


1901-53 

1901-229 
1902-467 
1903-261 

1904-680 


1905-482 

1871-116 

1870-153 
1871-233 
1887-47 

1906-260 


1906-488 


1903-348 
1878-111 

1905-55 

1905-65 

1905-66 

1905-118 

1905-429 

1905-504 

1906-97 

1906-105 

1906-180 

1904-167 
1902-242 
1902-145 

1901-73 
1902-145 


120-1823 

122-1721 
123-2309 
127-1994 
131-1419 
131-1687 

122-1721 

124-319 
129-1609 

93-2484 

97-2532 
101-2823 
105-1263 

112-951 

132-842 

119-653 


40-346 

123-1283 

130-1312 

125-1702 
129-480 
129-2073 
106-1501 

14-748 

114-1827 

114-2091 

114-2092 

115-1328 

118-2249 

119-1259 

121-340 

121-689 

122-1398 

131-1690 

110-603 

101-449 

99-669 

129-1267 
196-643 

99-669 


32 


INTERLOCUTORY  MOTIONS 


TITLE 


Rccd  V.  Landman. 


CD. 


O.  G. 


Reichcrt  v.   Brown 

Reichenback  v.   Goodwin 
Rennyson  v.   Alerritt.... 


Reynolds  v.  Bean 

Reynolds   v.    Haberman 

Richardson  v.  Leidgen 

Ries  V.  Thomson 

Rinsche  v.    Sandherr 

Ritter  v.  Kralkaw  &  Connor 

Roberts  v.  Webster 

Robin  V.  Muller  and  Bonnet 

Robin  V.  Muller  and  Bonnet 

Robin  V.  Muller  and  Bonnet 

Ro'bins  v.  Titus  v.  Titus 

Robinson  v.  Copeland 

Robinson   v.    Copeland 

Robinson  v.  Copeland 

Robinson  v.  Townsend  v.  Copeland 


1891-73 

1893-lOG 

1898-52 

1894-2 

1898-52 

1894-3 

■1898-84 

1894-13 

1899-111 

1906-415 

1893-50 

1892-54 

1893-20 
1897-195 
1902-126 
1904-8 


1902 

1903- 
1889- 

1891- 
1892- 
1901- 

1896- 

1891- 

1893- 

1903- 

1903- 

1904- 
1905- 

1905- 

1904 

1904 

1904 

1904 

1904- 
1904- 
1905- 

1903 

1901- 
1905 

1903 

1904 

1904 

190G- 

1903 

1904 
1902 
1902 
1903 


461 

179 

195 

93 

105 

211 

63 

233 

41 

273 

183 

325 
•585 

138 

569 

201 

571 

154 

-267 
-282 
-201 

13 

-227 
-10 

-218 

-233 

664 

-739 

327 

-320 

-405 

263 

418 


55-1275 

G4-1005 

83-743 

66-513 

83-746 

66-513 

83-1660 

66-1005 

87-lGOS 

124-2903 

63-311 

58-1415 

62-1063 
81-2246 
99-446 
108-290 
132-678 

101-2821 

104-1895 
49-130 

55-1527 
59-1103 
97-1837 

77-153 

57-1598 

62-1516 

105-1780 

104-1897 

111-1935 
114-1553 

115-2135 

113-2506 

110-1429 

113-2506 

110-310 

111-584 
111-810 
116-1732 

102-466 

97-2531 
114-262 

105-263 

110-2017 

112-501 

123-2313 

106-997 

111-1627 
101-1611 
100-683 
107-269 


INTERLOCTTTORY  MOTIONS 


TITLE 


CD. 


O.  G. 


Robinson  v.  Scelinger 

Rockstroh  v.  Warnick 

Roemer  v.  Xeumann 

Rogers  v.  Winssinger 

Rolf  V.  Taylor 

Rinsche  v.  Sandherr 

Sanders  v.  Hawthorne  v.  Hoyt... 

Sanford  Mills  v.  Avej'ard 

Sarfert    

Sargent  v.  Burge 

Schenckc  v.   Redir 

Schermer  v.  Linderman  and  Stork 

Schmiedl   v.    W'alden 

Schmertz  v.   Appert 

Schnabel   v.    Schellabergcr 

Schofield  V.  McGovern  v.  Woods. 

Schubert  v.  Munro 

Schulze    

Schiipphans   

Schiipphaus  v.  Stevens   

Schweitzer   

Scott  V.   Radeau 

Scott  V.  Emmet  and  Hewlett 

Scott  V.  Emmet  and  Hewlett 


1905-10 


1889-654 
1902-463 
1891-111 
1904-333 

1903-273 
1906-467 

1899-129 

1903-151 

1902-38 

1877-62 

1885-19 

1878-28 

1870-135 

1872-205 

1874-20 

1876-115 

1876-144 

1880-181 

1904-347 

1891-150 

1896-95 

1898-77 

1894-95 

1899-334 

1905-529 

1904-460 

1905-49 

1902-339 

1901-365 

1902-340 

1903-48 

1904-413 

1905-606 

1901-179 

1903-443 
1903-475 
1906-215 

1905-210 

1905-189 

1905-536 

1905-189 


114-262 
130-660 
131-234 
132-1837 

49-1535 
101-2821 

56-804 
111-1938 
122-680 
105-1780 

125-1347 

12S-4.-)6 

88-385 

104-577 

102-1049 

11-1055 

30-1091 
13-498 


9-964 
10-165 
18-733 

111-2222 

56-1563 

77-1784 

83r-1511 

68-658 
89-1862 
119-1924 
113  284 
114-1550 
100-2775 
93-1452 
100-2776 
102-1296 
112-1216 
114-2383 

97-1371 

107-834 

107-1378 

116-2009 

116-2007 

116-1184 

119-2233 

119-1184 


34 


INTERLOCUTORY  MOTIONS 


TITLE 

CD. 

0.  G. 

Scott  V.    Ford " 

1878-106 

14  413 

1887-78 

40-807 

Scott  V.  Hayes  &  Bergcr 

1906-140 
1906-104 

1906-49 L 

121-2326 

Scott  V.   Southgate 

121-689 

125-1703 

Scribner  &  Warner  v.   Child  v.   Balslc> 

1892-104 

59-1103 

Seaman  v.   Brooks 

.... 

1902-267 

100-685 

Sibley  Soap  Co.  v.  Lambert  Pharmacal 

Co. 

1903-143 

103  2172 

Seeberger  v.  Dodge 

1904-505 

113-1415 

Seeberger  v.  Dodge 

1905-603 

114-2382 

1904-505 

113-1415 

1905-554 

119-2521 

1906-566 

120-2130 

1906-743 

123-2631 

1906-735 

123-2312 

' 

1906-738 

123-2313 
127-1234 
128-1690 
132-477 

Scldcn  V.  Gerts  and   Palmer 

1903-262 

105-1531 

Serrell  v.  Donnelly 

.... 

120-2501 

Shallenberger  v.  Andrews 

1902-346 
1900-65 

100-3013 

Sharer   v.    McHenry 

91-1034 

Sharer  v.   McHenry 

1902-503 

1900-65 

98  583 

91-1034 

1903-52 

102-1552 

190.3-545 

103-1684 

1903-350 

106-1501 

1905-81 

11.5-506 

1905-379 

118-1071 

Sheppard  v.  Webb 

1901-32 

94-1577 

Short  V.  Sprague 

1891-166 

56-1708 

Shrum    v.    Banmgarten 

1903-150 

104-577 

1905-117 

115-1328 
'129-2835 
132-232 

Sibley  Soap  Co.  v.  Lambert  Pharmacal 

Co. 

1903-143 

103-2172 

Siebert  v.   Blumbcrg 

1906-325 

1896-47 

1899-173 

1900-179 

124-628 

Sievert  v.  Shuman   

76-1714 

Sih' erman  v.  Hendrickson 

88-1703 

9.3-940 

1901-82 

96-843 

1901-238 

97-2742 

1903-311 

106-763 

1905-98 

115-803 

Silverman    v.    Hendrickson 

1902-123 

99-445 

1902-527 

99-1171 
99-1388 

1903-320 

106-767 

INTERLOCUTORY  MOTIONS 


35 


TITLE 


CD. 


O.  G. 


Silverman  v.  Hendrickson 

Smith  V.   Carmichael 

Smith   V.   Dimond 

Smith    V.    Perry 

Snider  v.   Bunnell , 

Snider  v.   Bunnell , 


Sobey  v.   Holsclaw 


Spaulding  v.  Xorden 
Stapleton    v.    Kinney 

Stearns  v.  Prescott. .  , 
Steinmetz   v.    Hewitt. 

Steinmetz  v.  Thomas, 
Story  V.  Criswell.... 
Streat  v.  Freckleton.. 

Struble  v.  Young.  . .  , 
Sturgis    V.    Hopewell. 


1902-527 

99-1171 

1902-199 

99-2548 

1905-46 

114-1265 

1900-179 

93-1123 

1901-188 

97-1374 

1881-34 

20-742 

1876-12 

9-688 

1877-14 

11-196 

1877-16 

11-197 

1878-141 

15-387 

1880-69 

•17-394 

1902-460 

101-2572 

1903-117 

103-890 

1902-460 

101-2572 

1903-306 

106-544 

1904-93 

109-1071 

1904-233 

110-2017 

1904-279 

111-809 

1906-93 

121-338 

127-1992 

1905-523 

119-1922 

1906-57 

■120-1823 

1906-185 

122-1722 

1906-273 

123-2309 

1906-307 

124-319 

126-3041 

127-1994 

127-1995 

127-1996 

131-1419 

132-1588 

133-1188 

134-256 

1904-439 

112-2091 

1901-414 

96-1432 

1904-497 

113-1145 

1906-74 

120-2444 

132-842 

1878-24 

13-121 

1904-489 

107-1972 

1904-203 

110-1429 

1905-507 

119-1260 

1902  262 

100-683 

1899-85 

87-695 

1902-7 

98-227 

1903-573 

104-580 

131-360 

1906-95 

121-339 

1906-97 

121-340 

1904-82 

109-1067 

1904-347 

111-2222 

1905-546 

119-2236 

131-363 

36 


INTERLOCUTORY  MOTIONS 


TITLE 


CD. 


O.  G. 


Sullivan  v.  Thomson 

Summers   v.   Hart 

Sutton  V.  Steele  ■ 

Sutton  V.  Steele  and  Steele 

Sweeney  v.  Jaros 

Swift    

Talbot  V.  Monell 

Templin  v.   Sergeant 

Thompson     

Thomson   and   Unbehend   v.   Hisley 

Thomson  v.  Weston 

Thomson  v.  Weston 


Thullen  v.  Young  &  Townsend.... 
Tournier     

Tournier  

Townsend  v.  Copcland  v.  Robinson 

Townsend  v.  Copeland  v.  Robinson 

Townsend  v.  Copeland  v.  Robinson 
Townsend  v.  Copeland  v.  Robinson 
Towmsend  v.  Copeland  v.  Robinson 


1901-21 

1903-2G1 

1902-104 

1002-168 
1904-342 
1904-467 

1903-427 

1906-111 

1892-197 
1904-365 

1902-216 

1902-419 
1904-291 

1905-488 
1902-6 

1894-43 

1898-3 
1898-173 

1901-24 

1902-521 

1903-227 
1903-345 
1903-364 
1903-410 

1904-299 
1904-577 

1905-436 

1906-306 

1902-12 

1904-36 

1905-559 

1906-46 
1906-76 
1906-114 
1906-299 

1906-311 

1905-559 
1906-299 
1906-379 

1906-356 

1906-379 


94-585 

105-1263 

98-2585 

99-1380 
110-2235 
113-548 

107  541 

121-1012 

129-12GT 

60-1883 
111  2494 

99-2965 

101-1833 
111-1038 
130-1690 

119-961 

98-22? 

133-1680 

66-1596 

82-185 

84-1584 

132-1584 

94  988 

99-864 

105-498 

106-1241 

106-1507 

107-266 

106-2018 

111-1365 

114-766 

128-460 

118-2251 

94-2166 

98-229 

108-798 

119-2523 

120-906 
120-2445 
121-1012 
124-317 

124-623 

119-2523 

124-317 

124-1845 

124-1210 

124-1845 

126-1355 

132-845 
132-1073 


INTERLOCUTORY  MOTIONS 


37 


TITLE 


Townscnd  v.  Corey 

Townsend   v.    Ivhrct 

Tripp  V.  Wolff  V.  Jones 

Trant  and  Trant  v.  Disston  and  Morse.... 

Trnfant  v.   Prindlc   v.   Brown 

Trufant  v.   Prindlc  v.   Brown 

U.  S.  ex  rcl.  Lowry  ct  al.  v.  Allen  Com. .  . . 

U.   S.   ex   rel.  The   Newcomb   Motor   Co.   v 
Allen  (Moore)  Commissioner 

Vali(iuct   V.   Johnson 

Von  Alteneclv  v.  Thompson  et  al 

Van  Auken  v.  Osborne  v.  Harrison  v.  Camp 
bell  and  Van  Anken 

Van  Dcpoele  v.  Daft 

Von  Hefner-Altcneck 

Von  Welsbach  v.  Lungren 

Votey  V.  Galley 

Votey  V.  Wuest  Jr.  v.  Doman 

Vreeland  v.  Fessenden  v.  Schlocmilch 

Vrecland  v.  Fessenden  v.  Schloemilch 

Walker  v.   Brunhoff 

Wallace   •  • 

Walsh  V.  Hallbauer 

Walsh  V.  Hallbauer 

Warnant  v.  Warnant 

Warner  v.   Mead 

Waters  et  al.  v.  Yost  et  al 

Webber   

Weber   


CD. 


O.  G. 


1905-548 

119-2237 

1906-506 

125  2051 

1903  141 

103-2171 

1870-99 

1902-397 

101-1608 

1904-282 

111  1033 

1904-680 

112-957 

1906-765 

125-2365 

127-1994 

133-1188 

130-302 

133-1188 

133-1680 

1900-132 

92-1795 

1880-109 

17  571 

1905-518 

119-1584 

1892-15 

58-520 

189:3-109 

64-1006 

1883-114 

23-2233 

1889-177 

48-537 

1891-13 

54-503 

1891-15 

1898-265 

85-1738 

1905-462 

119  339 

1904-323 

111-1627 

1906-S 

120-325 

1903-315 

117-2633 

1905-534 

119-1926 

1906-26 

130-659 

1906-169 

122-1046 

1905-506 

119-1259 

1905-454 

118-2537 

1905-411 

118-1688 

1899-184 

88  2409 

1903-141 

10.3-2171 

1901-9 

94-223 

1903-236 

105-744 

1880-36 

17-265 

1906-197 

122  2061 

1875-59 

8-517 

1887-49 

40-345 

40-346 

1902  93 

98  2362 

1902-457 

101  2570 

38 


INTERLOCUTORY  MOTIONS 


TITLE 


Weber  v.  Hall 

Weeden    

Weidcmann    

Weintraub    v.    Hewitt 

Weissenthanner  v.   Goldstein 

Weitling  v.   Cabell 

Wells  V.  Packer 


CD. 


1904-279 


Wende  v.  Home 

Wert  V.  Borst  and  Groscop 
Wheeler    

Wheeler  v.  Seeberger 

Wherry  v.  Heck 

Whipple  V.  Sharp 

Whipple  V.  Sharp 

Whipple  V.  Sharp 

White  V.  Demarest 

White  V.  Thomson 

White  V.  Thomson 


O.  G. 


111-809 


1892-185 

60-1190 

1898-53 

83-743 

1898-60 

83-746 

1897-194 

81-2245 

1901-47 

95-1853 

1906-401 

124-2534 

1904-281 

111-810 

1905-201 

116-1732 

1872-185 

2-223 

1875-187 

1900-35 

90-1947 

1901-33 

94-1577 

1901-211 

97-1837 

1902-105 

98-2586 

1902-105 

98-2585 

1903-136 

103-1913 

1904-242 

110-2235 

1904-467 

113-548 

130-1311 

132-233 

1896-198 

122-2062 

130-2720 

1883-12 

23-1031 

1890-39 

50-1132 

1893-87 

64-155 

1906-515 

125-2363 

1889-201 

49-559 

1903-343 

106-1240 

1901-133 

96-2229 

1902-2 

98-225 

1904-101 

109-1337 

•1904-381 

112-254 

1902-5 

98-226 

1887-133 

41-1161 

1900-48 

91-228 

1902-393 

101-1371 

1902-471 

101-2825 

INTERLOCUTORY  MOTIONS 


39 


TITLE 

CD. 

0.  G. 

Whitlock  and   Huson   v.   Scott 

1902-166 

101-2823 

1902-467 

101-2823 

1904-467 

113-548 

Wickers  and  Furlon<r  v.  McKce 

1906-326 

124-908 

129-2074 

Wickers  and  Furlcjnir  v.  McKee 

129-869 

Wickers  and  T^urlung  v.  McKee 

129-1269 

129-1612 

Wickers  and  Furloni^  y.  Weinwurni 

1903-277 

117-1797 

129-869 

Wickers  and  Fnrlonsr  v.  Weinwurni 

129-2501 

Wicks  and  \\"vman  v.  Knowles 

1877-13 

11-196 

1877-49 

12-1 

\\  ilcoinb   V.    Lasher 

1902-374 

1904-84 

101-666 

109-1067 

AN'ilcomb  v.   Lasher 

1902-485 

101-3109 

W  ilcomb  V    Lasher 

1903-235 
1905-197 
1904-374 

105-743 

Wilcox  V    Xewton 

116-1452 

Wilkinson  v.  Jung^ren 

112-252 

1904-556 

113-2215 

1905-40 

114-973 

1905-99 

115-803 

Winter  v.   Slick  v.  Volkonimer 

1901-210 

1902-163 

97-1837 

99-1383 

1902-467 

101-2823 

1904-85 

109-1068 

1904-130 

109-2170 
128-2837 

Winter  v    Slick  v    Volkomnier 

1903-477 
1904-386 

107-1659 

W^inton  v.  Jcfferev 

112-500 

Wood  V.  Fames 

1880-106 

17-512 

Wood  V    Morris 

1873-39 
1903-391 

3-239 

Woods  V.  Waddell 

106-2017 

132-1588 

Wright  and  Stebbins  v.  Hansen 

1903-27 
1905-114 

114-761 

Yarnell    v.    Pope 

115  2136 

Yost  V.  Fleston 

1871-226 

1892-30 

1891-9 

Young  V.  Case 

58-945 

Zeidler   v.    Leech 

54-503 

83-805 

1899-9 

86-184 

1899-16 

86-491 

Zimmermann  w  Zamhoni 

1906  139 

121  2326 

VALIDITY   SEARCHES. 

I  have  the  use  of  a  Digest  of  U.  S.  Pateyits,  whicli  consists 
of  the  illustration  and  claims  of  each  patent,  cut  from  the 
Gazette  or  Reports,  and  pasted  upon  a  534  x  7  inch  card  ;  these 
cards  being  arranged  in  classes  and  sub-classes  according  to  the 
Patent  Office  classification.  The  half-tone  shows  a  single  sub- 
class upon  the  support  in  which  the  cards  are  placed  to  be 
looked  over.  This  digest  forms  an  incomparably  excellent 
index,  and  much  ground  can  be  covered  in  a  short  time,  and  a 
great  degree  of  thoroughness  attained. 

I  am  frequently  in  Washington,  where  a  search  may  be  con- 
tinued in  the  Patent  Office  if  thought  desirable. 


I  have  copies  of  all  U.  S.  patents  on  Gas  Engines  and  Auto- 
mobiles. I  have  access,  also,  to  complete  sets  of  monthly 
volumes  of  U.  S.  Patents,  and  a  complete  digest  of  British 
Patents. 

I  have  had  frequent  occasion  to  translate  German  patents  in 
making  searches  for  use  in  German  courts,  and  French  and  Ger- 
man patents  cited  as  references. 

MONEY  PAID  ME  FOR  VALIDITY  SEARCHES 
WILL  BE  CREDITED,  IF  DESIRED,  UPON  MY  RE- 
TAINER UP  TO  THE  AMOUNT  OF  THE  LATTER. 


INTERLOCUTORY  MOTIONS 

IN  THE  UNITED  STATES  PATENT  OFFICE. 

RULE  96. 

96.  AVlienever  the  claims  of  two  or  more  applications 
differ  in  phraseology,  but  cover  substantially  the  same 
patentable  subject-matter,  the  examiner,  when  one  of  the 
applications  is  ready  for  allowance,  will  suggesit  to  the 
parties  such  claims  as  are  necessary  to  cover  the  common 
invention  in  substantially  the  same  language.  The  exam- 
iner will  send  copies  of  the  letter  suggesting  claims  to  the 
applicant  and  to  the  assignees,  as  well  as  to  the  attorney 
of  record  in  each  case.  The  parties  to  whom  the  claims 
are  suggested  will  be  recjuired  to  make  such  claims  and 
put  the  applications  in  condition  for  allowance  within  a 
specified  time  in  order  that  an  interference  may  be  de- 
clared. Upon  the  failure  of  any  applicant  to  make  the 
claim  suggested  within  the  time  specified,  such  failure  or 
refusal  shall  be  taken  without  further  action  as  a  dis- 
claimer of  the  invention  covered  by  the  claim,  and  the 
issue  of  the  patent  to  the  applicant  whose  application  is 
in  condition  for  allowance  will  not  be  delayed  unless  the 
time  for  making  the  claim  and  putting  the  application  in 
condition  for  allowance  be  extended  ui^on  a  proper  show- 
ing. If  a  party  make  the  claim  without  putting  his  ap- 
plication in  condition  for  allowance,  the  declaration  of 
the  interference  will  not  be  delayed,  but  after  judgment 
of  priority  the  ajjplication  of  .such  jjarty  will  be  held  for 
revision  and  restriction,  subject  to  interference  with 
other  applications. 


RULE  IN  GENERAL— PURPOSE  AND  MEANING 

OF  RULE. 

1.     An  action  under  this  rule  establishes  a  date,  from 
which  the  one  vear  limited  for  action  bv  the  apjilicant 
runs.    Goulson  v.  Callendar,  etc.,  101  0.  G.  1607,  1902  C. 
D.  395. 


43  INTERLOCUTORY  MOTIONS  96 

2.     Rule  109  coiiteniplates  tlie  possibility  of  the  al- 
lowance   by    the    Examiner    upon    argument    of    claims 
which  were  for  some  reason  not  suggested  under  Rule  9(5. 
Davis  V.  Ocumpaugh  v.  Garrett,  103  ().  G.  1679. 

8.  The  procedure  of  this  rule  is  applicable  where  it 
is  proposed  to  place  an  api)lication  into  interference  with 
a  patent.    Card  &  Card,  112  0.  G.  499. 

1.     The  requirement  as  to  the  form  of  a  claim  is  not 
for  the  i)urpose  of  bringing  about  a  conflict,  but  to  define 
the  conflicting  subject-matter  in  the  same  words,  so  as 
to  avoid  confusion  and  to  j^revent  disputes. 
Card  &  Card,  112  0.  G.  499-500. 

5.  Claims  taken  from  a  patent  were  refused  entry 
because  involving  new  matter. 

Dilg,  112  O.  G.  953. 

6.  The  purpose  of  Rule  96  is  to  bring  about  uni- 
formity in  the  wording  of  the  claims.  The  practice  is  a 
good  one.  No  reason  appearing  why  the  claims  of  R. 
and  B.  should  not  be  brought  to  correspond  in  phrase- 
olog}^,  the  interference  should  have  been  dissolved  on 
the  ground  of  irregularity  in  the  declaration. 

Reichert  v.  Bi'own,  124  0.  G.  2903. 

WHEN  SUGGESTION  PROPER. 

7.  An  examination  of  the  record  of  the  patent 
makes  it  clear  that  the  invention  of  this  issue  was  not 
disclosed  in  the  original  specification  and  drawings. 
Tbis  omission  coupled  with  the  fact  that  he  failed  to 
disclose  the  same  until  it  was  admittedly  disclosed  to 
him — is  almost  sufficient  of  itself  to  warrant  the  con- 
clusion that  McKnight  never  independently  invented  the 
invention  of  the  issue. 

McKnight  V.  Pohle  &  Croasdale,  105  0.  G.  495. 

8.  The  question  as  to  the  right  of  Brown  to  make 
the  claims  is  one  relating  to  the  merits  of  the  case  and 
depends  upon  the  disclosure  made  by  B.  in  Ms  applica- 
tion. The  Examiner  has  held  that  the  disclosure  in  the 
Brown  application  is  sufficient  to  support  the  claims 
corresponding  to  the  issue,  and  from  this  affirmative 
decision  there  is  no  appeal.     (Rule  124.) 

Myers  v.  Brown,  112  0.  G.  2093-4. 


9G  INTERLOCUTORY  MOTIONS  43 

9.  Where  motion  for  dissolution  is  based  upon  the 
contention  that  the  suggestion  of  the  chiini  in  interfer- 
ence to  a  party  by  the  Examiner  was  improi^er  because 
said  party  had  not  claimed  substantially  the  same  in- 
vention. HELD  that  the  question  raised  involves  no 
such  irregularity  in  declaring'  the  interference  as  might 
preclude  proper  determination  of  the  question  of  prior- 
ity of  invention,  and  that  no  ground  for  dissolving  the 
interference  is  presented. 

Meden  v.  Curtis,  117  0.  G.  1795. 

10.  An  interference  was  decided  on  the  record.  In 
view  of  the  fact  that  the  new  claims  were  made  by  the 
successful  party,  that  they  differ  from  the  issue  in  other 
respects  than  in  scope,  and  that  the  defeated  party  al- 
ready has  an  allowable  claim  relating  to  the  same  sub- 
ject-matter, it  is  held  that  the  Examiner  may  properly 
suggest   the  new   claims   to   the   partv   under  Rule   96. 

Cramer  &  Hoak,  118  0.  G.  1068.' 

11.  Where  an  ai:)i)licant  appealed  from  the  refusal 
of  an  Examiner  to  inform  him  of  the  subject-matter  of 
the  issue  in  a  proposed  interference  in  order  that  he 
might  amend  so  as  to  include  the  issue  in  his  claims. 
HELD  that  it  is  not  the  practice  of  the  Office  to  suggest 
claims  to  an  applicant  in  order  to  create  possible  inter- 
ferences.   Weeden,  1892  C.  D.  185. 

12.  Where  a  party  shows  a  certain  structure  and 
claims  it  broadly,  and  his  claims  are  all  rejected,  and 
another  party  claims  the  same  structure  more  narrowly 
and  such  claims  are  allowed  and  suggested  to  the  other 
party.  HELD  no  error  in  so  suggesting  such  claims, 
as  both  parties  were  attempting  to  claim  the  same  in- 
vention within  the  meaning  of  Rule  96. 

Templin  v.  Sergent,  119  0.  G.  961. 

13.  Claims  should  be  suggested  only  when  parties 
are  attempting  to  claim  the  same  thing. 

Mvers  v.  Brown,  112  0.  G.  2093. 

Templin  v.  Sergent,  119  0.  G.  961. 

Bryant,  Wolcott  &  Davidson,  121  O.  G.  2663. 

In  the  case  at  bar,  however,  the  tension  controller 
of  the  Quest  and  Ilogan  ai)i)lication  was  si)ecifically  dif- 
ferent from  the  tension  controller  of  the  Ostrom  ai))ilica- 
tion.     The   practice   announced    in   Hammond   v.   Hart, 


44  INTERLOCUTORY  MOTIONS  96 

therefore,  would  not  have  warranted  the  Examiner  in 
suggesting  the  Quest  and  Hogan  claims  to  Ostrom. 
Quest  V.  Ostrom,  106  0.  G.  1502. 

CONSTRUCTION  AND  EFFECT  OF  CLAIMS. 

14.  Where  there  are  two  ajDplications  each  making  a 
specific  claim  and  no  generic  claim  to  an  invention  that 
might  be  included  in  one  generic  claim,  in  the  absence 
of  any  means  of  avoiding  the  possible  question  as  to 
equivalents,  the  Examiner  will  suggest  a  generic  claim 
to  the  applicants. 

Thompson,  98  O.  G.  227,  1902  C.  D.  6. 

15.  The  question  whether  those  claims  can  be  made 
by  Costello  and  are  suggested  to  him  under  Rule  96,  can- 
not be  considered  as  affecting  Hicks'  rights  unless  and 
until  Costello  makes  them. 

Hicks  V.  Costello,  103  0.  G.  1164. 

16.  The  question  of  identity  of  invention  is  in  general 
one  which  should  be  settled  bv  the  experts  of  the  Office. 

Luger  V.  Browning,  104  0.  G.  1123. 

17.  The  Hammond  v.  Hart  decision,  83  0.  G.  743, 
(1898  C.  D.  52)  did  not  make  it  mandatory  on  Exam- 
iners to  suggest  claims,  but  merely  stated  that  under 
certain  conditions,  no  good  reason  appearing  for  not 
doing  so;  the  only  condition  expressly  referred  to  was 
where  two  applicants  disclosed  the  same  specific  struc- 
ture and  one  of  the  applicants  had  specific  claim  to  the 
structure  and  the  other  a  generic  claim  thereto. 

Quest  V.  Ostrom,  106  0.  G.  1501. 

18.  There  seems  to  be  no  reason  why  the  Examiner 
should  enter  into  a  discussion  or  argument  with  these 
applicants  as  to  the  patentabilitv  of  suggested  claims. 

Sutton  &  Steele,  107  0.  G.  541. 

19.  The  claims  were  suggested  to  appellant  under 
the  provisions  of  Eule  96.  "Wlien  appellant  accepted  the 
claims  and  included  them  in  his  application,  he  laid 
claim  to  the  possession  of  the  invention  which  they 
define. 

If  now  the  appellant  wishes  to  withdraw  the  claim 
to  the  possession  of  the  invention  disclosed  in  the  issue, 
he  may  properly  do  so  by  conceding  priority  or  abandon- 
ing the  invention. 

Miller  v.  Perham,  123  0.  G.  2667. 


9(5  INTERLOCUTORY  MOTIONS  45 

20.  Where  claims  are  copied  from  a  patent  they  are 
to  be  construed  in  ligiit  of  such  patent. 

Bourn  v.  Hill,  Jr.,  123  0.  G.  1284. 

21.  Each  of  the  two  applicants  for  patent  has  made 
a  claim  in  identical  language.  The  claim  reads  without 
violence  to  the  proper  natural  meaning  of  its  terms  upon 
the  devices  disclosed  by  each  party;  but  the  patentable 
invention  which  this  claim  is  supposed  to  represent  is 
found  only  in  the  device  of  one  of  the  parties;  clearly 
under  these  circumstances  the  claim  fails  to  define  the 
invention.  Podlesak  &  Podlesak  v.  Mclnnerney,  123  0. 
G.  1989. 


NEGLECT  AND  REFUSAL  TO  MAKE  CLAIM- 
TIME  LIMIT. 

22.  See  example  of  unsettled  claim  in  Farnsworth  v. 
Andrews,  1876  C.  1).  3,  9  0.  G.  195. 

23.  Where  a  party  unreasonably  delays  to  put  his 
application  in  such  form  that  an  interference  may  be 
declared,  a  patent  will  be  issued  to  his  opponent. 

Lombard,  -13  0.  G.  1347,  1888  C.  D.  56. 

24.  The  Office  and  not  the  applicant  is  the  judge  of 
the  reasonableness  of  the  time. 

Lombard,  43  0.  G.  1347,  1888  C.  D.  56. 

25.  Claim  j^roposed  by  Examiner  but  not  accepted 
for  10  vears  and  until  after  an  interference  on  broader 
claim.    Gray,  18S9  C.  D.  91,  46  0.  G.  1277. 

26.  The  time  at  which  the  request  is  made,  whether 
the  request  and  accompanying  showing  be  within  the 
time  limited  or  not,  may  affect  the  character  of  the  show- 
ing, but  it  does  not  affect  the  jurisdiction  of  the  Exam- 
iner.   Curtis,  97  0.  G.  189, 1901  C.  D.  147. 

27.  In  this  case  there  is  an  allowable  claim  under 
consideration,  and  a  party  who  can  make  it  and  will  not 
do  so  within  a  specified  time. 

Furman  v.  Dean,  111  0.  G.  1366-68. 

28.  Where  applicant  seeks  to  enter  ilie  suggested 
claim  after  the  expiration  of  the  time  limited,  the  claim 
should  be  entered  and  then  rejected. 

Swift,   111  0.  G.  2494. 


46  INTERLOCUTORY  MOTIONS  9(5 

29.  Where  an  amendment  is  filed  under  the  ])r()vi- 
sions  of  Rule  96,  after  the  limit  of  time  s})ecified  by  the 
Examiner  has  expired  and  the  Examiner  rejects  the 
claims  in  accordance  with  the  Rule,  the  rejection  relates 
to  the  merits  and  is  not  reviewable  by  the  Commissioner 
upon  petition,  but  should  be  considered  on  appeal  in  the 
first  instance  by  the  Examiners-in-Chief. 

Ex  parte  Haug,  97  0.  G.  192. 

30.  Applicant  refused  to  put  his  claims  in  proper 
shape  insisting-  upon  his  right  to  amend  any  time  witliin 
one  year,  HELD  that  the  Examiner  should  suggest 
claims  to  both  parties,  and  proceed  with  the  interference 
leaving  any  question  of  estoppel  for  future  considera- 
tion. If  applicant  refuses  to  make  claims  suggested  he 
should  be  held  to  have  abandoned  their  subject-matter. 

Ferris,  114  0.  G.  541. 

31.  Where  an  applicant  is  a  resident  of  a  foreign 
country,  the  Examiner  should  grant  the  attorney's  peti- 
tion for  a  sufficient  extension  of  time  to  consult  his 
client.    Schulze,  114  0.  G.  1550. 

31a.  Rule  96  contemplates  that  the  issue  shall  be  in  the 
terms  of  the  claims  actually  made  by  both  parties,  or  at 
least  that  both  parties  should  have  had  an  opi^ortunity  to 
make  such  claims.  If  neither  party  has  made  a  claim 
which  can  be  made  by  the  other  party  by  reason  of  the 
inclusion  of  elements  which  are  not  of  the  essence  of  the 
invention,  then  as  pointed  out  in  ex  parte  Thompson 
(98  0.  G.  227),  the  Examiner  should  suggest  a  claim  to 
each  which  will  cover  the  real  invention  common  to  the 
two  cases,  omitting  such  limitation. 

McBride  v.  Eroder,  133  0.  G.  1680. 

ADDITIONAL  CASES. 

Klepetko,  126  0.  G.  387. 

Harvev,  102  0.  G.  621-22. 

Holland,  99  0.  G.  2548,  1902  C.  D.  199. 

Haug,  97  0.  G.  192,  1901  C.  D.  153. 

Tizlev,  89  0.  G.  2259. 

Hildreth,  97  0.  G.  1374,  1899  C.  D.  248,  1901  C.  D. 

186. 
Van  Auken  v.  Osborne  v.  Harrison  v.  Canfield  & 

Van  Auken,  119  0.  G.  1584. 


1)G  INTERLOCUTORY  MOTIONS  47 

Egly  V.  Schulze,  117  0.  G.  23f)6. 
Blackwood  v.  Wilder,  124  0.  G.  819. 
Anderson  v.  Vrooinan,  123  0.  G.  2975. 
Weideinann,  1897  C.  D.  194,  87  0.  G.  2245. 


48  INTERLOCUTORY  MOTIONS  97 

RULE  97.       • 

97.  AVlieu  au  interference  is  found  to  exist  and  the  ap- 
plications are  prepared  therefor,  the  primary  examiner 
will  forward  to  the  examiner  of  interferences  the  files 
and  drawings;  notices  of  interference  for  all  the  parties 
(as  specified  in  Rule  103)  disclosing  the  name  and  resi- 
dence of  each  party  and  that  of  his  attorney,  and  of  any 
assignee,  and,  if  any  party  be  a  patentee,  the  date  and 
number  of  the  patent;  the  ordinals  of  the  conflicting 
claims  and  the  title  of  the  invention  claimed;  and  the 
issue,  which  shall  be  clearly  and  concisely  defined  in  so 
majiy  counts  or  branches  as  may  be  necessary  in  order 
to  include  all  interfering  claims.  Where  the  issue  is  stated 
in  more  than  one  count  the  respective  claims  involved  in 
each  count  should  be  specified.  The  primary  examiner 
shall  also  forward  to  the  examiner  of  interferences  for  his 
use  a  statement  disclosing  the  applications  involved  in 
interference,  fully  identified,  the  name  and  residence  of 
any  assignee,  and  the  names  and  residences  of  all  at- 
torneys, both  principal  and  associate,  and  arranged  in 
the  inverse  chronological  order  of  their  filing  as  complet- 
ed applications,  and  also  disclosing  the  issue  or  issues 
and  the  ordinals  of  the  conflicting  claims. 

Whenever  it  shall  be  found  that  two  or  more  parties 
whose  interests  are  in  conflict  are  represented  by  the  same 
attorney,  the  examiner  will  notify  each  of  said  principal 
parties,  and  also  the  attorney,  of  this  fact. 


ISSUE  AND  NOTICES. 

32.  Where  the  only  claims  are  too  broad  in  view  of 
the  state  of  the  art. 

Kafer  &  Gould  v.  Dennison,  1869  C.  D.  14. 

33.  The  devices  in  interference  should  so  resemble 
each  other  that  a  patentable  form  of  claim  could  be 
framed  which  should  include  both  devices. 

Sargent  v.  Burge,  11  0.  G.  1055. 

34.  Notice  should  contain  a  brief  summary  of  the 
contested  subject-matter,  and  should  specify  the  conflict- 
ing claims. 

Stephen  v.  Bailey,  13  0.  G.  45. 


97  INTERLOCUTORY  MOTIONS  49 

35.  The  parties  have  no  right  to  be  heard  as  to  what 
shall  and  what  shall  not  be  included  in  the  interference. 

White  V.  Demarest,  41  0.  G.  1161. 

36.  The  practice  of  appropriating  literally  the  claim 
of  a  later  inventor,  which  is  drawn  with  reference  to  the 
employment  of  terms  found  in  the  preceding  specifica- 
tion, and  then  a])plying  the  claims  so  appropriated  to  a 
specification  of  older  date  which  does  not  contain  words 
and  expressions  suitable  to  lead  up  to  the  language  of  the 
appropriated  claim,  condemned. 

Eogers  v.  Winssinger,  1891  C.  D.  111. 

37.  The  test  of  an  interference  resides  in  the  claims 
and  not  in  mere  disclosures  in  the  application,  and  Office 
Rules  must  be  construed  in  connection  with  this  settled 
principle  of  law. 

Van  Depoele  v.  Daft,  1892,  C.  D.  15. 
Searle  v.  Fi'umveller  v.  Sessions,  1892,  C.  D.  27. 
■    '  Dodd  v.  Reading,  1892,  C.  D.  49. 

^8.     It  is  improper  in  declaring  an  interference,  to  in- 
clude a  broad  claim  in  a  narrow  issue.     The  issue  should 
be  as  broad  as  the  broadest  claim  involved  therein. 
Short  V.  Sprague,  1891,  C.  D.  166. 

39.  The  question  whether  an  interference  in  fact  ex- 
ists depends  not  merely  upon  the  language  employed  in 
the  respective  claims,  but  upon  the  question  whether  in 
addition  to  similarity  in  phraseology  there  is  an  interfer- 
ence between  the  subject-matter  of  the  respective  claims. 

Rogers  v.  Winssinger,  1891,  C.  D.  111. 

40.  It  is  a  cardinal  principle  that  in  declaring  an  in- 
terference the  issue  must  be  as  broad  as  the  broadest 
claimv  included  therein. 

Morgan  v.  Hanson,  77  0.  G.  154. 

41.  The  correct  solution  of  the  question  depends  upon 
whether  the  two  things  disclosed  by  the  respectivp 
])arties  have  been  clearly  claimed  and  with  the  same 
limitations.    Essex  v.  Wood,  89  0.  G.  353. 

42.  AVhile  it  is  unfortunate  that  there  should  be  dif- 
ferences of  opinion  as  to  the  meaning  of  the  issue,  such 
differences  alone  do  not  justify  a  dissolution  of  the  inter- 
ference.   Annand  v.  S'palckhaver,  97  ().  G.  2083. 


50  INTERLOCUTORY  MOTIONS  97 

■43.  Ill  an  interference  between  a  jDatent  and  an  appli- 
cation, the  issue  is  to  be  defined  bv  reference  to  the 
patent.    Feder  v.  Poyet,  89  0.  G.  1343-4. 

44.  Rule  97  contains  nothing  to  authorize  the  disclos- 
ure of  a  caveat  which  may  have  been  referred  to  during 
the  ex  parte  consideration  of  a  case. 

In  re  Lowrv,  90  0.  G.  445. 
Holland,  99  0.  G.  2548. 

45.  The  requirement  of  Eule  97  that  ''The  invention 
claimed"  be  disclosed,  means  that  the  invention  claimed 
should  be  disclosed  bv  title. 

Hoffstetter  v.  Kahn,  99  0.  G.  1624. 

46.  The  Office  must  define  the  issue  and  the  testimony 
must  be  confined  to  this  issue. 

Brill  &  Adams  v.  Uebelacker,  99  0.  G.  2966. 

47.  The  Primary  Examiner  should  arrange  the 
parties  in  the  inverse  chronological  order  in  which  they 
filed  their  apjDlications  directl}^  involved  in  the  interfer- 
ence. He  should  call  attention  to  any  earlier  application 
and  leave  the  question  of  its  effect  for  the  determination 
of  the  Examiner  of  Interferences. 

Raulet  &  Nicholson  v.  Adams,  114  0.  G.  1827. 

48.  AVithout  further  delay  of  which  there  has  been  too 
much  in  this  proceeding. 

Normand  v.  Krimmelbein,  115  0.  G.  249. 

49.  Though  ,the  applicant  is  the  original  inventor  of 
the  rotating  baking  surface  he  has  presented  no  convinc- 
ing evidence  tending  to  prove  originality  of  the  combina- 
tion claims,  and  priority  upon  these  claims  is  awarded  to 
the  patentee.    Cherney  v.  Clauss,  115  0.  G.  2137. 

50.  Remedy  for  failure  to  comply  with  this  rule  is  by 
motion  under  Rule  122. 

Cazin  V.  Von  Welsbach,  119  0.  G.  650. 

51.  Clerical  error  may  be  corrected  by  a  letter  from 
the  Primary  Examiner. 

Gully  V.  Burton,  120  0.  G.  325. 

52.  The  terms  of  a  claim  should  be  given  broadest 
construction. 

Podlesak  &  Podelsak  v.  Mclnnerney,  120  0.  G. 
2127. 


97  INTERLOCUTORY  MOTIONS  51 

53.  Wlien  a  claim  is  taken  from  a  patent  to  form  an 
issue,  that  issue  must  be  construed  in  reference  to  the 
specification  of  the  patent. 

Andrews  v.  Nilson,  12.3  0.  G.  1667. 

54.  The  senior  party  who  'has  a  patent  may  not  be 
heard  to  ask  that  his  claim  be  rewritten  so  that  he  may 
prevail  in  an  interference. 

Andrews  v.  Nelson,  123  0.  G.  1667. 

55.  I  am  of  the  opinion  that  these  terms  are  too  vague 
and  indefinite  to  point  out  with  certainty  any  particular 
structure  in  either  device,  and  that  the  interference 
should  be  dissolved  as  to  this  count  on  the  ground  of  ir- 
regularity in  declaration. 

Anderson  v.  Vrooman,  123  0.  G.  2975. 

56.  Care  should  be  exercised  in  forming  the  issue  that 
the  terms  used  by  the  parties  have  a  clear,  definite,  and 
common  meaning  in  each  application. 

Anderson  v.  Vrooman,  123  0.  G.  2975. 

57.  New  references  discovered  ''The  Primary  Exam- 
iner is  directed  to  withdraw  the  notice  of  hearing  which 
has  been  sent  out  and  to  determine  whether  the  interfer- 
ence should  continue  without  the  aid  of  argument  by 
either  jDarty." 

Behrend  v.  Lamme  v.  Tingley,  124  0.  G.  2536. 

58.  Less  than  half  this  number  of  counts  should  have 
sufficed.    Kempshall  v.  Eoyce,  129  0.  G.  3162. 

5r».  It  is  to  the  interest  of  the  interfering  parties,  the 
public  and  the  Office  that  the  counts  of  the  interference 
should  properly  cover  the  patentable  invention  which  is 
common  to  the  applications  involved  and  that  second  in- 
terferences should  be  avoided. 

Becker  v.  Otis,  129  0.  G.  1267. 

60.  The  Office  is  no  more  competent  than  the  Courts 
to  say  that  an  element  which  an  applicant  has  put  into 
his  claim  is  an  immaterial  one. 

Streat  v.  Freckleton,  87  0.  G.  695. 
Collom  V.  Thurman,  131  0.  G.  359. 

61.  In  general  while  applications  are  pending  in  the 
Office  the  claims  thereof  will  be  construed  as  broadly  as 


52  INTERLOCUTORY  MOTIONS  97 

tlie  ordinary  meaning  of  the  language  -will  permit,  for 
reasons  stated  in  mv  decisions  in  Cuter,  123  0.  G.  655. 

Briggs  V.  Cooke  v.  Jones  &  Taylor,  116  0.  G.  871. 

Podlesak  &  Podlesak  v.  Mclnnerney,  123  0.  G. 
1989. 

Lovejoy  v.  Cady,  123  0.  G.  654. 

Junge  V.  Harrington,  131  0.  G.  691. 

Jenne  v.  Brown  v.  Booth,  1892  C.  D.  78. 


109  INTERLOCUTORY  MOTIONS  53 

RULE  109. 

109.  An  apiDlicant  involved  in  an  interference  may,  at 
any  time  within  thirty  days  after  the  preliminary  state- 
ments (referred  to  in  Rule  110)  of  the  parties  have  been 
received  and  approved,  on  motion  duly  made,  as  provided 
by  Rule  153,  file  an  amendment  to  his  application  contain- 
ing any  claims  which  in  his  opinion  should  be  made  the 
basis  of  interference  between  himself  and  any  of  the 
other  parties.  Such  motion  must  be  accompanied  by  the 
proposed  amendment,  and  when  in  proper  form  will  be 
transmitted  by  the  examiner  of  interferences  to  the  prim- 
ary examiner  for  his  determination.  On  the  admission 
of  such  amendment,  and  the  adoption  of  the  claims  by 
the  other  parties  within  a  time  specified  by  the  examiner, 
as  in  Rule  96,  the  interference  will  be  redeclared,  or  other 
interferences  will  be  declared  to  include  the  same  as  may 
be  necessary.  New  preliminary  statements  will  be  re- 
ceived as  to  the  added  claims,  but  motions  for  dissolution 
will  not  be  transmitted  in  regard  thereto  where  the  ques- 
tions raised  could  have  been  disposed  of  in  connection 
with  the  admission  of  the  claims.  Amendments  to  the 
specification  will  not  be  received  during  the  pendency 
of  the  interference,  without  the  consent  of  the  Com- 
missioner, except  as  provided  herein,  and  in  Rules  106 
and  107. 


INSERTION  OF  CLAIMS. 

62.  It  is  contemplated  by  Rule  94  that  the  claims 
made  in  either  application  may  be  introduced  into  the 
other  application  by  amendment,  and  included  in  the  in- 
terference upon  motion  made  in  accordance  with  that 
rule.    Wheeler,  23  0.  G.  1031. 

63.  It  is  within  the  judicial  discretion  of  the  Exam- 
iner of  Interferences  to  extend  the  time  for  motion. 

House  V.  Butler,  1893  C.  D.  14. 

64.  May  not  introduce  matter  not  warranted  by  ap- 
plication as  originallv  filed. 

Grinnell  v.  Buell,  89  0.  G.  1863. 
Smith  V.  Carmicliael,  93  0.  G.  1123. 


54  INTERLOCUTORY  MOTIONS  109 

65.  A  person  making  a  specific  claim  only  cannot  in- 
sert a  generic  claim  wlien  in  the  meantime  another  ap- 
plicant has  applied  for  another  species. 

Bechman  v.  Wood,  89  0.  G.  2459-62. 

See  however  McBerty  v.  Cook,  90  0.  G.  2295. 

66.  Contemplates  the  possibility  of  an  allowance  by 
the  Examiner  npon  argument  of  claims  which  were  for 
some  reason  not  suggested  under  Rule  96. 

Davis  V.  Ocumpaugh  v.  Garett,  103  0.  G.  1679. 

67.  Matters  under  this  rule  must  come  in  the  first 
instance  before  the  Examiner  of  Interferences. 

If  no  claim  is  sought  to  be  inserted  the  motion  is  un- 
authorized. 

Only  matter  contemplated  by  Rules  106  and  107  and 
109  may  be  included  in  an  amendment  during  the  contin- 
uance of  an  interference. 

Smith  V.  Carmichael,  93  0.  G.  1123. 

68.  It  is  not  within  the  province  of  the  Examiner  of 
Interferences  to  consider  the  patentability  or  non-patent- 
ability of  the  claims.  This  is  so  even  if  the  proposed 
claims  have  been  once  rejected  by  the  Primary  Exam- 
iner.    Applicant  has  a  right  to  appeal. 

The  purpose  of  this  rule  is  to  have  counts  added  on 
motion  of  applicant  if  jDroper. 

Reece  v.  Fenwick,  97  0.  G.  188. 

69.  This  rule  does  not  provide  for  the  insertion  of 
claims  suggested  by  counsel  for  both  parties  after  con- 
sultation before  filing  a  preliminary  statement  or  taking 
testimony.  Case  remanded  to  Primary  Examiner  for  the 
purpose  of  consideration  of  such  an  amendment  under 
the  general  supervisory  power  of  the  Commissioner. 
Rule  213.    Reese  v.  Fenwick,  99  0.  G.  669. 

70.  It  is  held  that  where  a  party  promptly  presents 
claims  as  proposed  additional  counts  to  the  interference 
issue  they  should  be  considered  by  the  Primary  Exam- 
iner. The  claims  should  be  accompanied  by  a  motion 
similar  to  that  ordinarily  presented  under  Rule  109  and 
by  a  motion  before  the  Primary  Examiner  to  transmit. 
Practice  indicated. 

Churchward  v.  Douglas,  106  0.  G.  2016. 

71.  Tyden  presented  a  claim  in  an  amendment  which 
was  properly  a  second  species  which  could  not  on  that 


109  INTERLOCUTORY  MOTIONS  55 

account  be  entered.  This  decision  of  the  Examiner 
should  only  have  been  made  after  notice  to  the  other 
party. 

Tyden's  divisional  application  should  be  considered 
and  if  there  is  interfering  subject-matter,  an  interference 
should  be  declard  accordingly. 

Myers  v.  Tyden,  108  0.  G.  287. 

72.  Claims  contained  in  a  year  old  patent  to  one  of  the 
parties  refused  admission  in  view  of  the  fact  that  the 
testimony  was  nearly  complete. 

Newell  V.  Hubbard,  108  0.  G.  1053. 

73.  Practice  prescribed  where  one  of  two  interfering 
applicants  wishes  to  file  an  amendment  purporting  to 
put  the  application  in  shape  for  another  interference. 

Moore  v.  Hewitt  v.  Potter,  115  0.  G.  509. 

74.  Where  a  party  considers  that  a  claim  of  his  op- 
ponent could  be  made  by  him  under  Rule  109,  but  be- 
lieves that  the  claim  is  so  vague  and  indefinite  that 
proper  determination  of  the  question  of  priority  could 
not  be  based  thereon, — HELD  that  the  party  should  not 
ask  the  Office  to  make  this  claim  an  issue  but  should 
suggest  some  issue  which  would  properly  describe  the 
invention. 

Wickers  &  Furlong  v.  Weinman,  118  0.  G.  1797. 

75.  P.  offers  no  new  claim  at  this  time  though  it  would 
seem  that  from  the  inspection  of  these  applications  he 
might  readily  have  formulated  and  presented,  by  motion 
in  analogy  to  motion  under  Eule  109  the  broader  allow- 
able and  interfering  claims,  which  should,  in  his  opinion, 
be  included  in  the  issue,  if  any  such  claim  could  be  drawn. 

Phelps  V.  Warmley  v.'McCullough,  118  0.  G.  1069. 

76.  A  motion  to  amend  the  issue  of  an  interference 
under  Eule  109  was  properly  refused  transmission  wliere 
it  contained  a  proviso  that  the  claims  shall  be  added 
''without  prejudice  to  the  right  to  contest  such  claims 
under  the  provisions  of  Rule  122." 

Wheeler  v.  Palmros,  133  0.  G.  230. 


56  INTERLOCUTORY  MOTIONS  123 

RULE  122. 

122.  Motions  to  dissolve  an  interference  (1)  u[)on  the 
ground  that  there  has  been  such  informality  in  declaring 
the  same  as  will  j^reclude  a  proper  determination  of  the 
question  of  priority  of  invention,  or  (2)  which  deny  the 
patentability  of  an  applicant's  claim,  or  (3)  which  deny 
his  right  to  m^ke  the  claim,  or  (4)  which  allege  that 
counts  of  the  issue  have  different  meanings  in  the  cases 
of  different  parties  should  contain  a  full  statement  of  the 
grounds  relied  upon,  and  should,  if  possible,  be  made  not 
later  than  the  thirtieth  day  after  the  statements  of  the 
parties  have  been  received  and  approved.  Such  motions, 
and  all  motions  of  a  similar  character,  should  be  accom- 
panied by  a  motion  to  transmit  the  same  to  the  primary 
examiner,  and  such  motion  to  transmit  should  be  noticed 
for  hearing  upon  a  day  certain  before  the  examiner  of 
interferences.  When  in  proper  form  the  motion  pres- 
ented will  be  transmitted  by  the  examiner  of  interfer- 
ences, with  the  files  and  papers,  to  the  proper  jDrimary 
examiner  for  his  determination,  who  will  thereupon  fix 
a  day  certain  when  the  said  motion  will  be  heard  before 
him  uj^on  the  merits,  and  give  notice  thereof  to  all  the 
parties.  If  a  stay  of  proceedings  be  desired,  a  motion 
therefor  should  accompany  the  motion  for  transmission. 

When  the  motion  has  been  decided  by  the  primary  ex- 
aminer the  files  and  papers,  with  his  decision,  will  be 
sent  at  once  to  the  docket  clerk. 

Motions  to  shift  the  burden  of  proof  should  be  made 
before,  and  will  be  determined  b}^  the  examiner  of  inter- 
ferences. Xo  appeal  from  the  decision  on  such  motions 
will  be  entertained,  but  the  matter  may  be  reviewed  on 
appeal  from  the  final  decision  upon  the  question  of 
priority  of  invention. 


HISTORY. 

77.  The  practice  under  the  present  rule  is  to  render 
judgment  upon  the  opening  of  the  preliminary  state- 
ments, without  an  order  to  show  cause  why  such  award 
should  not  be  made,  leaving  the  party  failing  to  prevail 
to  bring  any  of  the  motions  permitted  by  the  rules  within 
the  time  limited  for  appeal. 

Kendall  v.  Frasch,  1891  C.  D.  36. 


133  INTERLOCUTORY  MOTIONS  57 

78.  It  is  contended  by  B.  that  under  long  standing 
practice  he  should  be  permitted  to  give  notice  of  other 
references  five  days  before  the  hearing  of  the  motion. 
The  reasons  for  this  practice  which  was  followed  in  the 
past,  but  which  has  not  been  permitted  for  some  time,  do 
not  now  exist.  Since  the  date  of  the  decisions  under 
which  an  aiDplicant  was  permitted  to  give  notice  five  days 
before  the  hearing,  of  additional  reasons  for  dissolving 
the  interferences,  Rule  122  has  been  amended  and  the 
time  within  which  motions  may  be  made  extended  from 
20  to  30  days.  It  has  also  been  amended  to  recjuire  that 
a  motion  for  dissolution  must  contain  a  full  statement  of 
the  grounds  relied  upon. 

Papendell  v.  Bunnell  v.  Reizenstein  v.  (raisman, 
V.  Gillett,  131  0.  G.  362. 

GENERAL  POLICY  AND  MEANING  OF  RULE. 

79.  The  practice  of  the  Office  contemplates  that  the 
question  of  the  patentability  of  the  subject-matter  of  an 
interference  should  be  decided  before  an  interference  is 
declared.  But  if  it  has  not  been,  then  it  must  be  before 
the  interference  can  go  on. 

Lynch  &  Raff  v.  Dryden  &  Underwood,  73  C.  D.  73. 

80.  There  is  nothing  in  the  rules  that  limits  the  ques- 
tion to  be  discussed  upon  a  motion  to  dissolve  to  tliose 
which  have  not  previously  been  considered  by  the  Pri- 
mary Examiner. 

Law  V.  Woolf,  55  0.  G.  1527. 

81.  One  object  of  motion  is  to  enable  the  Examiner 
to  decide  inter  partes  what  he  had  previously  decided 
without  a  hearing. 

Law  V.  Woolf,  1891  C.  D.  91;  55  0.  G.  1527. 

82.  Motions  must  be  made  after  the  declaration  of  in- 
terference.   Seevert  v.  Shuman,  76  0.  G.  1714. 

83.  When  an  interference  has  been  dissolved  as  to  a 
part  of  the  counts,  a  new  preliminary  statement  will  not 
be  admitted  as  to  the  remainder. 

Seaman  v.  Brooks,  100  0.  G.  685. 

84.  The  absurdity  of  a  declaration  of  interference  with 
a  reservation  at  the  same  time  of  the  question  of  patent- 


58  INTERLOCUTORY  MOTIONS  -        132 

ability  for  future  adjudication,  would  be,  so  far  at  least 
as  this  count  is  concerned,  too  glaring  to  be  tolerated. 
Such  questions  should  be  referred  for  determination. 
Oliver  V.  Felbel,  100  O.  G.  2384. 

85.  If  a  motion  to  dissolve  for  want  of  interference  in 
fact  is  not  made,  the  decision  of  the  interference  is  not 
conclusive  on  this  point,  and  the  defeated  party  may  raise 
the  question  when  his  competitors'  patent  is  cited  as  a 
reference.    Schupphaus,  100  0.  G.  2775. 

86.  There  may  be  an  interference  in  fact  notwith- 
standing the  devices  are  intended  for  different  purposes. 

Blue  V.  Power  v.  Owen,  101  0.  G.  2076. 

87.  If  a  motion  to  dissolve  because  one  applicant  is 
not  entitled  to  make  the  claim  is  not  filed,  the  question 
cannot  be  considered  on  the  final  adjudication. 

Woods  V.  Waddell,  106  0.  G.  2017. 

88.  As  stated  in  Maxwell  v.  Bryon  v.  Henry,  98  0.  G 
1968,  an  interference  should  not  continue  between  two 
parties  as  to  certain  counts  and  between  three  parties 
as  to  the  other  counts. 

Dow  V.  Benson,  107  0.  G.  1378. 

89.  The  diiferences  in  structure  referred  to,  however, 
are  not  included  in  the  claims,  and  are,  therefore,  imma- 
terial.   Auerbach  &  Gubing  &  Wiswell,  108  0.  G.  289-290. 

90.  Dissolution  is  necessary  only  where  the  irregu- 
larity is  such  as  will  preclude  a  proper  determination  of 
the  question  of  priority.  It  is  not  necessary  in  all  cases  of 
irregularity.  For  instance,  the  fact  that  one  applicant 
inserted  a  second  specific  claim  in  order  to  secure  an  in- 
terference is  not  material. 

Hoefer,  Hoefer  &  Hoefer  v.  Barnes,  108  0.  G.  560. 

91.  "Where  the  claims  of  interfering  parties  are  in 
identical  language  and  each  party  has  a  construction 
responding  in  function  to  the  broad  terms  thereof,  there 
is  an  interference  in  fact,  although  the  constructions  are 
specificallv  different. 

Gordon  v.  Wentworth,  120  O.  G.  1165. 

92.  Action  should  not  be  taken  by  the  Office  without 
sufficient  reason  where  an  adverse  determination  upon 
the  merits  of  the  patent  may  result;  but  where  reasons 
for  action  exist  the  Office  is  not  to  be  deterred  therefrom 


1  «J3  INTERLOCUTORY  MOTIONS  59 

because,  as  an  incident  thereto,  a  cloud  mav  be  cast  upon 
a  patent.    Griffith  v.  Dodgson,  122  0.  G.  2064. 

93.  The  Office  has  found  by  experience  that  in  order 
to  jDroperly  transact  business  the  questions  which  are 
sought  to  be  raised  by  applicants  appearing  before  it 
must  be  presented  according  to  certain  procedure.  While 
it  is  not  desired  to  be  too  technical,  yet  applicants  must 
be  required  to  follow  the  simple  and  well-known  proced- 
ure laid  down  in  the  Office  rules  and  in  a  long  line  of 
decisions.    Filbel  v.  Fox,  130  0.  G.  2375. 

SUBJECT  MATTER  OF  MOTION. 

94.  An  interference  should  be  dissolved  when  the  in- 
terference claim  is  improperly  introduced  into  a  reissue 
application  by  one  of  the  parties. 

Evaiis,  Bussel  &  Vose,  1873  C.  D.  36. 

95.  An  interference  should  be  dissolved  when  the  in- 
terference claims  are  not  legitimate  combinations. 

Pearl  &  Sawver,  1874  C.  D.  58. 
L^mch  &  Eoff  V.  Drvden  &  Underwood,  1873  C.  D. 
73. 

96.  A  motion  to  dissolve  the  interference  on  the 
ground  of  lack  of  patentable  invention  in  the  claim  in- 
volved allowed. 

Dunton  v.  Young  &  McFarren,  10  0.  G.  243. 
Chambers  &  Mendham  v.  Tucker  et  al.,  11  0.  G. 
1009. 

97.  Motion  to  dissolve  for  non-interference  in  fact, 
onlv  involves  all  inquiries  which  assume  patentability 
of  tiie  claims.    Zeidler  v.  Leech,  1891  C.  D.  9. 

98.  If  the  applicant  does  not  choose  to  restrict  his 
application  in  the  manner  pointed  out  in  Rule  104,  but 
thinks  the  claims  do  not  interfere,  he  may  move  to  dis- 
solve the  interference  under  this  rule. 

Drawbaugh  v.  Blake,  23  0.  G.  1221. 

99.  If  one  party  is  a  joint  applicant  and  is  not  a  joint 
inventor,  the  opposite  party  may  move  to  dissolve  the  in- 
terference on  the  ground  that  his  opponent  has  no  right 
to  make  the  claim.  _   (Authorities  i-eviewed.) 

Hicks  &  Keating  v.  Purvis  &  Bilgram,  40  0.  G. 
348. 


60  INTERLOCUTORY  MOTIONS  Jg^ 

100.  After  the  time  limit  has  exijired  it  is  discretion- 
ary "with  the  Examiner  of  Interferences  whether  or  not 
he  will  transmit  the  motion. 

Scribner  &  Warner  v.  Childs  v.  Balsbv,  1892  C. 
D.  104. 

101.  Motion  to  dissolve  on  the  ground  that  the  affi- 
davit under  Rule  75  was  insufficient. 

Schmertz  v.  Appert,  77  0.  G.  1784. 

102.  Any  or  all  motions  provided  for  in  Rule  122  may 
be  brought  in  connection  with  claims  introduced  under 
Rule  109  or  the  issue  including  the  same,  even  though 
such  motion  were  brought  and  the  question  raised  thereby 
decided,  under  the  interference  as  originallv  declared. 

Jenne  v.  Brown  v.  Booth,  1892  C.  D.  78. 

103.  Failure  to  make  a  motion  to  dissolve  upon  a 
ground  that  an  accepted  amendment  to  one  of  the  ap- 
plications involved  is  for  new  matter  amounts  to  an  ac- 
quiescence in  such  acceptance  and  in  the  decision  of  the 
Office  that  such  amendment  does  not  involve  new  matter. 

Croskey  v.  Atterbury,  1896  C.  D.  437. 

104.  The  contention  that  the  issue  is  devoid  of  patent- 
able novelty  is  not  a  proper  one  for  co\isideration,  since 
it  is  ex  parte  in  character. 

Benjamin  v.  Searle,  59  0.  G.  630. 

105.  The  question  of  operativeness  may  best  be  de- 
termined when  the  witnesses  are  called  and  each  party 
given  a  chance  to  make  such  tests  as  may  be  deemed 
desirable. 

The  question  as  to  whether  one  applicant  has  the  right 
to  make  the  claim  and  whether  he  did  in  fact  make  it, 
are  not  properly  appealable. 

Eastman  v.  Houston,  87  0.  G.  1871. 

106.  Trade-Mark.  If  the  issue  in  respect  to  the  class 
of  goods  is  narrower  than  the  class  of  goods  upon  which 
the  other  party  uses  the  mark,  there  has  been  such  ir- 
regularity in  declaring  the  interference  that  it  should  be 
dissolved.    Banigan  Co.  v.  Bloomingdale,  89  0.  G.  1670. 

107.  It  is  well  settled  that  motions  to  dissolve  an  in- 
terference cannot  properly  be  based  on  matter  outside  of 
the  record.     Bundy  v.  Rumbarger,  92  0.  G.  2002. 

108.  These  motions  must  be  solelv  based  on  the  appli- 
cations.   Felbel  v.  Oliver,  92  0.  G.  2339. 


133  INTERLOCUTORY  MOTIONS  61 

109.  It  is  well  settled  'that  the  bar  to  a  party's  right 
which  is  contemplated  by  the  rule, — must  exist  independ- 
ent of  the  interference. 

Horton  v.  Summer,  93  0.  G.  2339. 

110.  One  party  discovered  that  his  opponent's  device 
did  not  act  as  described  in  the  application  on  cross  ex- 
amination of  the  party, — Not  matter  coming  within  this 
rule.    Sullivan  v.  Thomson,  94  0.  G.  585. 

111.  The  fact  that  applicant  asserts  that  his  applica- 
tion is  a  division  of  a  former  one  does  not  constitute  an 
irregularity  under  this  rule. 

Meyer  v.  Sarfert,  96  0.  G.  1037. 

112.  The  question  of  public  use  is  not  a  proper  founda- 
tion for  a  motion  under  this  rule,  but  the  question  of 
anticipation  bv  patents  is. 

Davis' V.  Swift,  96  0.  G.  2409. 

113.  It  is  the  settled  practice  of  this  Office  that  noth- 
ing can  be  considered  by  the  Primary  Examiner  on  a 
motion  to  dissolve  on  interference  which  is  not  contained 
in  the  record  of  the  case,  unless  timely  notice  of  such 
matter  as  may  be  urged  in  support  of  the  motion  which  is 
not  of  record,  is  served  upon  the  opposing  party  before 
the  time  set  for  hearing. 

Summers  v.  Hart,  98  0.  G.  2585. 

114.  The  motion  to  the  Examiner  of  Interferences 
should  be  accompanied  by  a  motion  to  transmit.  If  not 
made  within  20  days  excuse  should  be  made. 

This  is  not  the  proper  way  to  try  the  question  of  joint 
or  sole  ownership. 

Frederick  v.  Frederick  &  Frederick,  99  0.  G.  1865. 

115.  Where  W.  had  two  applications  pending  in  either 
of  which  the  claims  in  controversy  could  be  made  and  he 
elected  to  make  them  in  the  later  case,  held  that  he  is 
entitled  to  the  date  of  his  earlier  case  as  his  record  date, 
even  if  the  earlier  application  should  have  been  included. 
In  the  absence  of  some  substantial  contention  the  inter- 
ference will  not  be  dissolved  for  this  reason  after  judg- 
ment.   Holland,  99  0.  G.  2548. 

116.  The  question  as  to  whether  it  was  a  serious 
error  for  the  Examiner  to  have  declared  the  interference 


62  INTERLOCUTORY  MOTIONS  ±2*4 

witliout  formally  allowing  tlie  claim  is  one  which  should 
be  raised  under  this  rule. 

Luger  V.  Browning,  100  0.  G.  231. 

117.  Facts  which  are  alleged  to  be  established  bj^  the 
testimony  are  to  be  determined  on  final  hearing  and  not 
on  motion  for  dissolution. 

Shallenberger  v.  Andrews,  100  0.  G.  3013. 

118.  A  protest  against  the  declaration  of  an  interfer- 
ence. Such  motions  should  be  determined  under  this  rule. 
It  is  contrary  to  the  settled  practice  of  the  Office  for  the 
Commissioner  to  consider  in  advance  the  propriety  of  the 
proposed  action  of  a  lower  tribunal. 

Sarfert,  102  0.  G.  1049. 

119.  The  question  of  operativeness  of  invention  should 
be  determined  by  a  motion  under  this  rule. 

Osborn  v.  Hotsapillar,  102  0.  G.  1296. 

120.  A  petition  asking  that  the  action  setting  aside  a 
default  resulting  in  abandonment,  dismissed  for  lack  of 
equitv.     Gerand  v.  Abbott,  Grand  &  McGirr,  103  0.  G. 

662. 

121.  A  motion  upon  alleged  anticipatory  matter 
should  be  made  under  this  rule  in  due  time  and  not  under 
Rule  126.    Dittgen  v.  Parmenter,  103  0.  G.  1161. 

122.  Questions  as  to  new  matter  must  be  brought  up 
under  this  rule  and  not  by  motion  to  shift  the  burden  of 
proof  under  Eule  116. 

Tripp  V.  Wolff  V.  Jones,  103  0.  G.  2171. 

123.  The  case  will  not  be  transmitted  under  this  rule 
to  the  Primary  Examiner  to  investigate  the  question  of 
public  use.    Shrum  v.  Baumgarten,  101  0.  G.  577. 

124-.  Whether  or  not  the  junior  joarty  materially  alter- 
ed his  application  after  filing  it,  is  a  question  not  to  be 
considered  by  a  motion  under  this  rule. 

Hopkins  v.  Scott  (See  Rowe  &  Brickmann,  133  0. 
G.  515),  105  0.  G.  1263. 

125.     Two   interferences   declared   between   the   same 
parties.     That  these  two  issues  are  not  patentably  dis- 
tinct is  not  ground  for  dissolution  under  this  rule. 
Dorr  V.  Ames  &  Rearson,  106  0.  G.  263. 


±22  INTERLOCUTORY  MOTIONS  63 

126.  If  tlie  matter  of  the  propriety  of  suggested  claims 
under  Eule  96  is  to  be  discussed  it  should  be  by  motion 
under  Rule  122. 

Sutton  V.  Steele,  107  0.  G.  541. 

127.  Xo  ai^peal  from  the  refusal  of  the  Examiners  in 
Chief  to  direct  the  attention  of  the  Commissioner  to 
certain  patents  alleged  by  one  of  the  contestants  to  con- 
stitute a  statutory  bar. 

Schmedl  v.  Walden,  1891  C.  D.  150. 

128.  The  question  whether  or  not  a  sujoplemental 
oath  should  be  furnished  is  an  ex  parte  C[uestion.  The 
absence  of  such  an  oath  even  where  it  should  have  been 
furnished  is  not  such  irregularity  as  will  preclude  the 
proper  determination  of  the  ciuestion  of  prioritv. 

Auerbach  &  Gubing  v.  Wiswell,  108  0.  G.  289. 

129.  Patentability  of  opponent's  claims  must  be  pre- 
sented under  this  rule  and  not  by  appeal  ag^ainst  award 
of  priority.    Kempshall  v.  Sieberling,  110  0.  G.  1127. 

130.  Joint  or  sole  inventor.  Interference  not  suspend- 
ed to  determine. 

Hull  V.  Hallbery,  110  0.  G.  1128. 

132.  Failure  to  make  a  motion  to  dissolve  upon  a 
ground  that  an  accepted  amendment  to  one  of  the  ap- 
plications involved  is  for  new  matter  amounts  to  an 
accjuiescence  in  such  acceptance  and  in  the  decision  of 
the  Office  that  such  amendment  does  not  involve  new 
matter.    Croskey  v.  Atterbury,  1896  C.  D.  437. 

133.  If  it  were  true  that  the  counts  of  the  interfer-  / 
ence  covered  two  specific  forms  not  to  be  included  in  one      [y 
application,  still  this  would  be  no  ground  for  dissolution. 

Atherton  &  Happ  v.  Cheney,  111  0.  G.  1040. 

134.  It  is  well  settled  that  the  question  as  to  whether 
the  original  application  contains  the  invention  should  be 
raised  by  a  motion  to  dissolve.  It  will  not  be  considered 
upon  an  appeal  upon  the  question  of  priority  of  inven- 
tion.   Seeberger  v.  Dodge,  113  0.  G.  1415. 

135.  Question  of  joint  inventorship  relates  to  a  statu- 
tory bar  and  not  to  priority  of  invention,  and  therefore 
such  an  inquirv  in  an  interference  proceeding  is  not 
proper.    Eobin'v.  :\Iuller  &  Bonnett,  113  0.  G.  2506. 


64  INTERLOCUTORY  MOTIONS  i22 

I.'jG.  Facts  outside  of  the  record  should  be  stated  in, 
the  motion  to  receive  consideration. 

Law  V.  Woolf,  1891  C.  D.  91,  55  ().  (J.  1527. 

137.  The  Examiner  decides  nothing  but  the  question 
raised  by  the  motion  and  appeal  brings  up  nothing  but 
the  decision  and  the  motion  decided. 

Zeidler  v.  Leech,  1891  C.  D.  9. 

138.  As  held  in  the  case  of  Jenne  v.  Brown  v.  Booth, 
59  0.  G.  157;  C.  D.  1892-78,  any  or  all  motions  provided 
for  in  Rule  122  may  be  brought  in  connection  with  the 
new  claims  included  in  the  interference  under  the  provi- 
sions of  Rule  109,  and  therefore  P's  motion  as  to  the  new 
counts  was  a  proper  one. 

Pfingst  V.  Anderson,  114  0.  G.  264. 

139.  It  is  the  general  policy  of  this  Office  to  have  all 
questions  which  may  be  brought  in  issue  between  the, 
parties  settled  in  one  interference. 

Xormand  v.  Krimmelbein,  115  0.  G.  249, 

141.  Where  a  motion  for  dissolution  rests  only  on 
limitations  into  the  claims  by  the  moving  party  and  not 
stated  in  such  claims.  HELD  that  the  motion  was  prop- 
erly denied.    Votey  v.  Tally,  119  0.  G.  339. 

142.  Error  in  suggesting  a  claim  under  Rule  96.  is  not 
considered  such  an  irregularity  in  the  declaration  as  will 
preclude  a  proper  determination  of  the  questions  of 
priority,  and  is  not  therefore  a  sufficient  warrant  for  dis- 
solving the  same. 

Templin  v.  Sergeant,  119  0.  G.  961. 

143.  The  presumptive  is  that  the  Office  did  its  duty  in 
notifying  the  caveators  of  the  filing  of  the  interfering 
application,  and  the  burden  is  upon  them  to  establish 
their  allegation  of  no  notice  bv  adequate  proof. 

Killeher  &  Grimm  v.  Mayhew,  72  0.  G.  895. 

144.  A  person  is  not  estopped  from  moving  to  dissolve 
because  he  made  the  claim  constituting  the  issue  and 
filed  a  preliminary  statement  relating  thereto. 

Van  Auken  v.  Osborne  v.  Harrison  v.  Oanfield  & 
Van  Auken,  119  0.  G.  1584. 

145.  The  improper  issuing  of  a  patent  to  one's  op- 
ponent is  not  a  ground  for  dissolution. 

Dunker  v.  Reist,  119  O.  G.  1925. 


123  INTERLOCUTORY  MOTIONS  65 

146.  Xon-interferenee  in  fact  was  placed  in  tlie  rules 
as  a  ground  for  dissolution  of  interference  at  a  time  when 
parties  were  put  in  interference  proceedings  who  had  not 
made  the  same  claims;  it  can  only  occur  now  where  the 
same  terms,  though  properly  used  in  the  application  of 
each  party,  have  distinctly  different  meanings  in  the  re- 
spective cases,  Blackmore  v.  Hall,  119  0.  G.  2523.  See 
Townsend  v.  Copeland  v.  Eobinson,  119  0.  G.  2533. 

147.  Upon  a  petition  that  the  Examiner  be  directed 
to  hear  a  j^arty  upon  his  opponent's  motion  to  amend 
on  the  c[uestion  his  opponent's  right  to  make  projoosed 
claims.  HELD,  that  petitioner  may  present  his  argu- 
ments uj^on  motion  for  dissolution  in  case  the  proposed 
claims  are  admitted. 

Moore  v.  Curtis,  120  0.  G.  324. 

148.  Unsubstantial  and  clerical  errors  do  not  form 
l^roper  basis  for  dissolution. 

Gaily  V.  Burton,  120  0.  G.  325. 

149.  Matters  w'hich  may  be  considered  in  determining 
the  ciuestion  of  priority  should  not  be  transmitted  to  the 
Primarv  Examiner.    Such  as  effect  of  prior  applications. 

Struble  v.  Young,  121  0.  G.  339. 

150.  Lack  of  Notarial  Seal  not  a  sufficient  reason  for 
dissolving  interference. 

Scott  V.  Hayes  &  Berger,  121  0.  G.  2326. 

151.  The  right  of  the  moving  jDarty  to  make  the  claims 
corresponding  to  the  issue  cannot  properly  be  raised  on; 
a  motion  to  dissolve  the  interference,  and  if  such  party 
does  not  wish  to  contest  the  interference,  because  he  is  of 
the  opinion  that  he  has  no  right  to  make  the  claims,  he 
should  take  action  in  accordance  with  the  provisions  of 
Rule  125,  concerning  prioritv  or  abandoning  the  inven- 
tion.    Miller  v.  Perham,  121  0.  G.  2667. 

Bellows  V.  King,  106  0.  G.  997. 
Robinson  v.  Titus,  110  0.  G.  310. 
Martin  v.  Mullen,  127  0.  G.  3216. 
Balzlev  v.  Seiberger,  115  0.  G.  1329. 
Griffith  V.  Hodgson,  116  0.  G.  1731. 
Garnall  v.  Pope,  115  0.  G.  1329. 
Potter  V.  Mcintosh,  127  0.  G.  1995. 

152.  Where  two  interferences  are  declared,  one  be- 
tween application  of  S.  and  a  divisional  application  of 


66  INTERLOCUTORY  MOTIONS  122 

P.,  aud  the  other  between  the  same  application  of  S.  and 
the  parent  case  of  P.,  the  fact  that  the  issue  involving 
the  parent  case  could  as  well  have  been  included  in  the 
interference  involving  the  divisional  application  does  not 
constitute  such  an  irregularity  as  will  prevent  a  proper 
determination  of  the  question  of  priority. 

Phillips  V.  Sensenich,  122  0.  G.  1047. 

153.  So  long  as  the  i^arties  are  claiming  common 
features  of  the  invention  it  is  not  of  consequence  which  is 
superior,  and  the  alleged  superiority  of  one  over  the 
other  is  no  ground  for  a  dissolution  of  the  interference. 

Kolb  V.  Hemingway  v.  Curtis,  122  0.  G.  1397. 

154.  If  it  is  decided  that  one  party  has  no  right  to 
make  the  claims,  the  question  of  interference  in  fact  will 
not  be  considered  after  decision  becomes  final. 

Warner  v.  Mead,  122  O.  G.  2061. 

155.  The  motion  for  dissolution  in  this  case  seems  to 
have  been  based  upon  the  ground  of  non-interference  in 
fact,  in  addition  to  that  of  a  lack  of  right  of  a  party  to 
make  claims,  in  order  that  the  same  facts  of  reason  may 
be  urged  in  connection  with  either  or  both  grounds;  but 
this  is  exactly  what  a  party  should  not  be  permitted  to 
do,  in  view  of  the  labor  and  delay  attending  such  double 
consideration  both  before  the  Primary  Examiner  and  on 
Appeals.     Booth,  Booth  &  Flvnt  v.  Hanan  &  Gates  v. 

Marshall,  123  0.  G.  319! 

156.  Where  the  interference  is  generic  the  first  inven- 
tor of  a  species  is  entitled  to  .I'udgment. 

Lovejoy  v.  Cady,  123  0.  G.  654. 

157.  If  a  party  has  no  reasons  to  allege  in  his  motion 
to  transmit  which  w^ould  sujoport  dissolution  upon  ap- 
pealable grounds,  he  would  not  be  permitted  to  waste  the 
time  and  labor  of  his  opponents  and  of  the  Office  with  ap- 
peals which  can  have  no  other  object  than  to  obtain  a 
reA^iew  of  an  unappealable  decision. 

Pym  V.  Hadaway,  123  0.  G.  1283. 

158.  Interference  and  patentability  considered  by  the 
Primary  Examiner  a  careful  examination  nevertheless 
made  to  determine  whether  there  is  anything  in  the  record 
of  this  case,  as  there  was  in  the  case  of  Podlesak  and 
Podlesak  v.  Mclnnerney  (Court  of  Appeals  Jan.  4,  1906) 


±2'4  INTERLOCUTORY  MOTIONS  67 

necessitating  limitations  of  the  claims  in  the  respective 
applications  to  si^ecific  non-interfering  features. 
Bechman  v.  Southgate,  123  0.  d.  2309. 
Cites 

119  0.  G.  1922,  Sobev  v.  Holsclaw. 

120  0.  G.  1823,  Potter  v.  Mcintosh. 
89  0.  G.  2459,  Bechman  v.  Wood. 

89  0.  G.  2462,  Bechman  v.  Wood. 

159.  The  failure  to  include  the  claims  did  not  consti- 
tute an  irregularity. 

Locke  V.  Crebbin,  124  0.  G.  317. 

160.  It  is  to  be  noted  that  the  question  involved  in 
the  contention  of  Blackford  relates  to  the  patentability 
of  the  present  issue  over  the  subject  matter  of  the  issue 
of  the  former  interference,  and  not  of  the  right  of  Wilder 
to  make  the  claim  by  reason  of  the  nature  of  the  disclos- 
ure. The  question  is  therefore  not  in  the  class  indicated 
in  my  decisions  as  subject  to  consideration  in  determin- 
ing the  award  of  prioritv- 

Blackford  v.  Wilder,  124  0.  G.  319. 

161.  Question  of  res  adjiidicafa  properly  raised  under 
this  rule. 

Blackford  v.  Wilder,  124  0.  G.  319. 
This  case  cites: 

Blackford  v.  Wilder,  104  0.  G.  578. 
Potter  V.  Mcintosh,  122  O.  G.  1721. 
Sobev  V.  Holsclaw,  119  0.  G.  1922. 
Pohle  V.  McKnight,  119  0.  G.  2519. 
Kilbourne  v.  Hirner,  122  0.  G.  729. 
Podlesak  v.  Mclnnerney,  120  O.  G.  2127. 

162.  So  far  as  now  appears  there  is  nothing  in  the 
statute  or  rules  requiring  the  defects  in  Turner's  oath 
to  be  corrected  before  the  same  is  accepted  as  a  com- 
plete application.  Such  being  the  case  the  correction  of 
these  defects  is  an  ex  parte  matter  which  may  be  at- 
tended to  after  termination  of  interference. 

Dukesmith  v.  Carrington  v.  Turner,  125  0.  G.  348. 

163.  A  motion  to  require  a  supplementary  oath  and  to 
shift  filing  date  to  the  date  of  such  oath  should  be  pre- 
sented as  a  motion  to  dissolve. 

Dukesmith  v.  Corrington  v.  Turner,  125  0.  G.  348. 


68  INTERLOCUTORY  MOTIONS  I'^g 

1G4.  Appeal  on  motion  to  shift  tlie  burden  of  proof 
dismissed. 

Dnkesmit'h  v.  Carrington  v.  Turner,  125  O.  G.  348. 

165.  It  is  the  general  policy  of  this  Office  to  have  all 
questions  which  may  be  brought  in  issue  between  the 
parties  settled  in  one  interference.    (99  0.  G.  669.) 

Normand  v.  Krimmelbein,  115  0.  G.  249. 

166.  Interlocutory  motions  are  not  permitted  upon 
questions  requiring  the  taking  of  proof  such  as  origin- 
ality and  public  use.  (44  0.  G.  945;  87  0.  G.  180;  96  0.  G. 
2409;  103  0.  G.  1164;  104  0.  G.  577). 

Corv,  Gilhart  &  Martin,  Jr.,  v.  Blakey,  115  0.  G. 
1328. 

167.  A  motion  under  this  rule  is  a  j)roper  reply  to  an 
order  to  show  cause  under  Rule  114. 

Filbel  V.  Fox,  130  0.  G.  2375. 

168.  The  real  meaning  of  the  words  of  the  claims  may 
not  be  apparent  when  viewed  solely  in  the  light  of  the 
disclosure  of  one  party.  It  is  believed  therefore  that  the 
best  practical  results  will  be  obtained  by  permitting  a 
party  when  moving  to  dissolve  an  interference  not  only 
to  raise  the  question  of  the  rig'ht  of  the  other  party  to 
make  the  claims  of  the  issue,  but  also  the  question  of  the 
meaning  of  the  claims  when  applied  to  the  respective 
structures  involved. 

Eilerman  v.  McElroy,  130  0.  G.  2721. 

169.  Motion  denied  transmission  for  the  reason  that 
the  question  of  interference  in  fact  is  no  longer  a  part  of 
the  grounds  enumerated  in  Kule  122. 

Eilerman  v.  McElroy,  130  0.  G.  2721. 

170.  A  motion  to  dissolve  which  alleges  that  the  op- 
posite party  is  not  entitled  to  receive  a  patent  on  his 
reissue  application,  involving  matters  that  should  be  con- 
sidered on  the  ex  parte  reissue  application  should  be 
transmitted. 

Emmet  v.  Fullagar,  130  0.  G.  2719. 

171.  A  motion  to  dissolve  on  the  ground  of  non-patent- 
ability of  the  issue  is  a  proper  reply  to  an  order  to  show 
cause  under  Eule  114. 

Field  V.  Colman,  131  0.  G.  1686. 


1«J2  INTERLOCUTORY  MOTIONS  69 

172.  Vagueness  and  indefiniteness  of  the  issue  have 
uniformly  been  held  a  proper  question  to  raise  under  in- 
formalities, or  irregularity  in  the  declaration  of  the 
interference,  and  it  is  thought  properly  so  held. 

Meld  V.  Colman,  131  0.  G.  1686. 

173.  It  would  seem  that  misrepresentation  in  a  collat- 
eral matter  would  be  sufficient  for  dissolution  of  a  trade- 
mark interference. 

L.  ^y.  Levy  &  Co.  v.  Uri,  131  0.  G.  1687. 

171.  The  redeclaration  of  an  interference  to  include 
new  counts  does  not  relieve  against  negligence  in  making 
a  motion  as  to  original  claims. 

Murphy  v.  Borland,  132  O.  G.  231. 

175.  Grounds  3,  4  and  5,  allege  the  bar  of  prior  knowl- 
edge and  use  based  upon  the  affidavit  of  one  Plumb. 
These  grounds  were  proi3erly  refused  transmission  under 
the  well-established  practice  set  forth  in  66  0.  G.  1596; 
96  0.  G.  2409;  104  0.  G.  577;  115  0.  G.  1328.  M.  contends 
that  because  these  decisions  refer  primarily  to  the  bar 
of  public  use  the  practice  set  forth  therein  is  not  ap- 
plicable. This  contention  however,  is  not  well  taken, 
since  the  bar  of  prior  knowledge  and  use  alleged  in  the 
Plumb  affidavit  would  have  to  be  proved  in  a  manner 
similar  to  the  bar  of  public  use. 

Murphy  v.  Borland,  132  0.  G.  231. 

176.  Motion  to  dissolve  upon  the  ground  that  public 
use  was  shown  by  the  preliminary  statement  of  the  ap- 
plicant.   Transmission  joint  and  sole  invention. 

Thomson  (S:  Uubehend  v.  Hisley,  66  0.  G.  1596. 

177.  The  question  whether  a  third  party  not  involved 
in  the  interference  is  the  real  inventor  of  the  subject 
matter  in  issue  is  not  pertinent  to  the  question  of  priority 
of  invention. 

Hamm  v.  Black,  132  0.  G.  841.     (Cases  cited.) 

178.  The  question  whether  or  not  a  supj^lemental  oath 
should  be  required  has  been  uniformly  held  by  this  Office 
to  be  an  ex  parte  matter  upon  which  the  joroper  deter- 
mination of  prioritv  is  not  dependent. 

Auerback  &  Gubing  v.  Wiswell,  108  0.  G.  289. 
Silverman  v.  Hendrickson,  99  0.  G.  445. 
Kane  v.  Brill  &  Adams,  84  O.  G.  1142. 
Kennyson  v.  Merritt,  58  0.  G.  1415. 


70  INTERLOCUTORY  MOTIONS  V^2 

Phelps  V.  Sensenicli,  132  0.  G.  677. 
Eowe  V.  Brinkman,  133  0.  G.  515. 
In  this  last  case  however,  it  was  directed  that  the  in- 
terference be  suspended  to  give  applicant  a  chance  to 
file  a  proper  oath  and  that  in  default  the  interference 
should  be  dissolved. 

179.  The  question  whether  the  applicant  will  be  per- 
mitted to  amend  his  specification  after  such  dissolution 
to  incorporate  the  matter  submitted  or  any  other  amend- 
ment is  an  c.v  parte  question,  which  must  be  determined 
independently  of  any  interference  proceeding. 
Wheeler  v.  Palmros,  133  0.  G.  230. 

179a.  Facts  which  are  alleged  to  be  established 
by  the  testimony  are  to  be  determined  on  final  hearing 
and  not  on  motion  to  dissolve.  Mead  v.  Brown,  48  0.  G. 
397;  Campbell  v.  Brown,  56  0.  G.  1565;  Chase  v.  Ryder, 
61  0.  G.  885;  Lotticem  v.  Force  and  Parenteau,  82  0.  G. 
185;  Shiels  v.  Lawrence,  87  0.  G.  180;  Felbel  v.  Oliver,  92 
0.  G.  2339;  Horton  v.  Summer,  92  0.  G.  2339;  Shellenber- 
ger  V.  Andrews,  100  0.  G.  3013;  Faure  v.  Bradley  and 
Crocker  v.  Cowles  and  Cowles,  44  0.  G.  945;  Paget  v. 
Bugg,  89  0.  G.  1342;  Sullivan  v.  Thomson,  94  0.  G.  585; 
Frederick  v.  Frederick  and  Frederick,  99  0.  G.  1865;  Rit- 
ter  V.  Krakaw  and  Connor,  104  0.  G.  1897;  Thompson  and 
Unbehend  v.  Hisley,  66  0.  G.  1596;  Hopkins  v.  Scott,  105 
0.  G.  1263;  Winlon  v.  Jeffery,  112  0.  G.  500;  Cory,  Geb- 
hart  and  Martin,  Jr.,  v.  Blakey,  115  0.  G.  1328;  Struble  v. 
Young,  121  0.  G.  339. 


GROUND  FOR  DISSOLUTION. 

180.  In  this  case  the  Primary  Examiner  dissolved  the 
interference  on  the  affidavit  of  one  of  the  Trauts  as  a  sole 
inventor.  This  order  was  irregular;  after  the  declaration 
of  an  interference  it  cannot  be  dissolved  except  by  the 
Examiner  of  Interferences,  or  the  Commissioner,  or  by 
the  Board  of  Examiners,  or  Commissioner  on  appeal. 

Traut  &  Traut  v.  Disston  &  Morse,  70  0.  G.  99. 

181.  Where  applicant's  preliminary  statement  shows 
two  years'  public  use. 

Schenck  v.  Rider,  1870  C.  D.  135. 


122  INTERLOCUTORY  MOTIONS  71 

182.  Where  the  proof  shows  that  neither  party  made 
the  invention,  the  question  of  priority  is  at  an  end,  and 
there  can  be  no  further  interference.  Interference  dis- 
solved. 

A  sole  inventor  is  not  a  party  to  an  interference  be- 
tween third  partv  and  himself  and  another  as  joint  in- 
ventor.    Pugh  V.  "Hamilton,  1871  C.  D.  116. 

Walters  et  al.  v.  Yost  et  al.,  1875  C.  D.  59. 

183.  Where  the  specifications  disclose  compositions 
that  are  essentially  different  both  as  to  proportions  and 
the  character  of  the  ingredients  used  and  the  process  of 
using  the  composition,  the  interference  should  be  dis- 
solved.    Jackson  v.  Nichols,  1871  C.  D.  278. 

184.  An  interference  should  be  dissolved  when  the  in- 
terfering claim  is  to  elements  which  are  not  shown  to  be 
capable  of  use  by  themselves. 

Jackson  v.  Nichols,  1871  C.  D.  278. 

185.  The  interference  dissolved  by  the  Examiners-in- 
Chief  on  the  ground  that  the  two  applications  did  not 
interfere,  on  an  appeal  from  the  final  judgment  of  the 
Examiner  of  Interferences. 

Frick,  1872  C.  D.  124. 

186.  An  interference  should  be  dissolved  when  the 
two  inventions  are  radically  different  and  designed  for 
entirelv  different  purposes. 

Pearl  &  Sawver,  1874  C.  D.  58. 

Dod  V.  Cobb  (1876  C.  D.  232)  10  0.  G.  826. 

187.  An  interference  dissolved  because  the  claim  was 
too  broad  in  view  of  the  state  of  the  art. 

Scott  V.  Ford,  14  0.  G.  413. 

188.  If  the  claims  are  substantially  the  same  the  in- 
terference should  not  be  dissolved. 

Drawbaugh  v.  Blake,  23  0.  G.  1221. 

189.  A  motion  to  dissolve  an  interference  on  the 
ground  that  the  oath  to  one  of  the  applications  was  not 
taken  before  a  proper  officer  considered,  and  the  Com- 
missioner says: 

"Judgment  as  to  the  application  of  A  and  B  has 

been  admitted  to   examination,   notwithstanding 

the  effect  under  consideration,  the  examination 

will  not  be  suspended." 

i>ut  no  patent  should  issue  until  the  mistake  was  recti- 

ficil.     Warnant  v.  Waniant,  17  0.  G.  265. 


72  INTERLOCUTORY  MOTIONS  122 

190.  Wlien  an  interference  is  sent  back  to  the  Primary 
Examiner  on  a  motion  to  dissolve  or  suspend  the  inter- 
ference, or  by  direction  of  the  Commissioner  upon  the 
allegation  that  there  exists  a  statutory  bar  to  the  claim, 
or  that  the  claim  is  not  patentable,  or  that  the  applicant 
has  no  right  to  make  the  claim  (Rule  116-120),  which 
motion  is  granted  by  the  Examiner,  the  interference  is 
pro  hac  vice  dissolved,  and  the  application  involved  be- 
comes ex  parte. 

Faure  v.  Bradley  v.  Cowles  &  Cowles,  40  0.  G.  243. 

191.  Interference  dissolved  to  permit  Primary  Ex- 
aminer to  require  an  oath  applying  to  date  of  completion 
of  the  application. 

Miller  v.  Lambert,  72  0.  G.  1903. 

192.  Motion  to  dissolve  interference  upon  the  ground 
of  estoppel  by  oath  of  applicant  to  a  preliminary  state- 
ment and  by  the  testimony  of  his  witnesses  in  a  jDrevious 
interference  wherein  he  was  one  of  two  applicants. 

Mead  &  Brown,  48  0.  G.  397. 

193.  Where  foreign  patent  expired  because  of  non- 
payment of  tax  and  applicant  summoned  to  show  cause 
why  interference  should  not  be  dissolved  for  want  of 
right  to  make  the  claim.  His  failure  to  respond  con- 
strued an  admission. 

Armstrong,  71  0.  G.  1615. 

194.  A  motion  to  dissolve  because  opponents  were 
estopped  from  having  this  interference  in  view  of  a  prior 
interference  transmitted. 

Poglesing  v.  Hutt  &  Phillips,  61  0.  G.  151. 

195.  Interference  dissolved  because  of  non-patenta- 
bility of  issue,  claims  were  limited  and  new  interferences 
declared;  motion  to  dissolve  because  patentability  was 
res  adjudicata  refused. 

Kitsee  v.  Robertson,  97  0.  G.  2306. 

196.  In  that  case  (121  0.  G.  1978)  the  existence  of  in- 
terference in  fact  was  regarded  as  doubtful,  and  it  was  in 
view  of  the  doubt  that  the  consent  of  the  parties  was  per- 
mitted to  turn  the  decision  in  favor  of  dissolution.  I 
have  no  doubt  as  to  the  existence  of  interference  in  fact 
in  the  present  case.  The  interference  must  accordingly 
continue.     (Trade-Mark.) 

Hirsch  &  Co.  v.  Jennen  v.  Hilbert  &  Sons  v.  Sam- 
ple &  Co.,  122  0.  G.  1724. 


^22  INTERLOCUTORY  MOTIONS  73 

197.  A  motion  for  dissolution  l3ases  upon  the  ground 
that  the  moving  party  has  no  right  to  make  the  claim  to 
the  subject-matter  in  issue  should  not  be  transmitted. 

Martin  v.  Mullin,  127  0.  G.  3216. 
Miller  V.  Perham,  121  0.  G.  2667. 
Bellows  V.  King,  106  0.  G.  997. 
Kobins,  Jr.,  v.  Titus,  110  0.  G.  310. 

PATENTEE— APPLICANT. 

198.  Transmission  refused  to  examine  into  the  ques-, 
tion  of  public  use  alleged  to  be  shown  by  preliminary 
statement  of  an  applicant  on  motion  of  a  patentee. 
Cases  reviewed. 

Thomson  &  Unbehend  v.  Hisley,  66  0.  G.  1596. 

199.  "Where  a  patentee  claiming  specifically  would  be 
entitled  to  all  his  claims,  even  if  he  were  an  applicant, 
in  sj)ite  of  a  judgment  of  priority  in  favor  of  his  opponent, 
the  fact  that  his  opponent's  claim  would  dominate  his 
own  is  no  sufficient  reason  for  declaring  or  continuing  an 
interference.    Rule  75  provides  for  preciselv  such  a  case. 

Eeed  v.  Landman,  1891  C.  D.  73. 
199a.  Where  a  party's  opponent  is  a  patentee  said 
party  cannot  move  to  dissolve  on  the  ground  that  he  has 
no  right  to  make  the  claims  adopted  by  him  when  sug- 
gested under  Rule  96,  otherwise  if  opponent  is  an 
apj)licant. 

Hernsdorf  v.  Driggs  v.  Schneider,  133  0.  G.  1189. 

200.  An  applicant  for  reissue  moved  to  dissolve  the 
interference  on  the  grounds  that  the  issue  was  not  patent- 
able.   HELD,  such  motion  should  not  be  considered. 

Bellows  V.  King,  106  0.  G.  997. 

201.  Where  E.,  an  applicant,  moved  to  dissolve  on  the 
ground  that  the  issue  was  not  patentable,  it  was  said: 

''The  only  question  to  be  determined  in  the  inter- 
ference is  whether  a  patent  should  issue  to  K.,  since  he 
is  the  only  applicant  claiming  the  invention,  and  since  he 
admits  by  his  motion  that  he  is  not  entitled  to  the  claims 
there  seems  to  be  no  reason  why  the  Office  should  consume 
time  in  considering  the  matter." 

Robins,  Jr.,  v.  Titus  and  Titus,  110  0.  G.  310. 

202.  A  patentee  is  clearly  entitled  to  make  a  motion 
uj^on  anv  of  the  grounds  specified. 

Fickinger  &  Balke  v.  Hulett,  110  0.  G.  859. 


<*^ 


74  INTERLOCUTORY  MOTIONS  1*>'^ 

203.  An  applicant  may  move  to  dissolve  interference 
on  the  ground  that  a  patentee  had  no  right  to  make  the 
claims.     Hull  v.  Hallberg,  110  0.  G.  1428. 

204.  AYhere  one  of  the  parties  to  an  interference  is  a 
patentee  and  the  applicant  brings  a  motion  to  dissolve  on 
the  ground  that  the  issue  is  not  patentable,  held  that 
the  interference  will  be  dissolved,  and  the  applicant  will 
be  thereafter  regarded  as  estopped  from  insisting  upon 
the  claims.     Weissenthauner  v.  Goldstein,  111  0.  G.  810. 

*205.     A  patentee  may  move  to  dissolve  an  interference 
on  the  ground  that  the  claims  are  not  patentable. 
Baltzley  v.  Seiberger,  115  0.  G.  1329. 

206.  Where  an  applicant  is  in  interference  with  a  pat- 
entee and  moves  for  a  dissolution  of  the  interference  on 
the  ground  of  non-patentability  of  the  issue,  the  interfer- 
ence should  be  dissolved  even  where  patent  has  been 
inadvertentlv  issued  during  pending  of  application. 

Griffith  V.  Dodgson,  116  0.  G.  1731. 
Garnell  v.  Pope,  115  O.  G.  2136. 

207.  The  statute  does  not  specifically  provide  for  the 
consideration  of  motions,  and  Eule  122  both  in  the  letter 
and  reason  limits  the  fight  to  such  consideration  to  those 
cases  where  the  opponent  of  the  moving  party  is  an 
applicant.     Griffith  v.  Dodgson,  116  0.  G.  1731. 

208.  In  Hisey  v.  Peters  (6  ApjD.  D.  C.  68)  this  court 
said  an  applicant  who  claims  an  alleged  patentable  in- 
vention is  not  to  be  heard  to  urge  non-patentability  of  his 
claim  after  it  has  been  placed  in  interference  with  other 
claims.     Potter  v.  Mcintosh,  127  0.  G.  1995. 

FORM  OF  MOTION. 

(See   "Transmission  of  Motion.") 

Winter  v.  Slick  v.  Wollkommer,  97  0.  G.  1837. 

209.  An  objection  to  the  patentability  of  a  claim 
should  be  made  by  a  motion  to  dissolve  the  interference 
and  not  bv  an  attempt  to  restrict  the  issue. 

Hockhausen  v.  Weston,  18  O.  G.  857. 

210.  For  form  and  practice  under  this  rule  see  Green 
V.  Siemens  v.  Hall  v.  Field,  37  0.  G.  1475. 


J  *i3  INTERLOCUTORY  MOTIONS  75 

211.  Irregularity  in  declaring  an  interference  has  ref- 
erence to  a  case  where,  in  consequence  of  some  defect, 
some  misdescription,  some  error  in  describing  the  thing 
alleged  to  be  the  subject  of  the  interference,  or  something 
of  that  character,  a  proper  solution  of  the  question  of 
priority  cannot  be  reached.  It  does  not  refer  to  what 
are  irregularities  in  consequence  of  a  violation  of  the 
provisions  of  Rules  121  and  122. 

Edison  &  Gilliland  v.  Phelps,  38  0.  G.  539. 

213.  The  decision  must  be  confined  to  the  question 
presented.     ZeidW  v.  Leech,  1891  C.  D.  9. 

214.  If  facts  are  relied  upon  other  than  those  dis- 
closed by  the  record,  they  should  be  stated  in  order  to 
receive  consideration. 

Law  V.  Woolf,  1891  0.  D.  91,  55  0.  G.  1527. 

215.  Patentability  is  not  in  question  in  a  motion  to 
dissolve  for  non-interference  in  fact. 

Forslund  v.  Matthews,  1891  C.  D.  237. 

216.  On  the  granting  of  a  motion  to  dissolve  the  in- 
terference after  judgment  on  the  record  the  Examiner 
of  Interferences  will  vacate  the  judgment  of  priority. 

Garrison  v.  Hubner,  1891  C.  D.  59. 

217.  Failure  to  make  a  motion  to  dissolve,  upon  a 
ground  that  an  accepted  amendment  to  one  of  the  ap- 
plications involved  is  for  new  matter,  amounts  to  an  ac- 
quiescence in  such  acceptance  and  in  the  decision  of  the 
Office  that  such  amendment  does  not  involve  new  matter. 

Croskey  v.  Atterbury,  1896  C.  D.  437. 

2"18.  Moving  to  dissolve  an  interference  upon  any  of 
the  grounds  stated  in  Rule  122  before  the  preliminary 
statements  are  opened  and  approved  is  a  practice  not  to 
be  encouraged. 

King  V.  Babendrier  v.  Libby,  89  0.  G.  2653. 

219.  A  motion  to  vacate  judgment  is  not  an  alterna- 
tive remedv  with  a  motion  to  dissolve.  . 

Patten  v.  Weisenfeld,  98  0.  G.  2589. 

220.  In  a  decision  the  four  reasons  for  dissolution 
should  be  kept  distinct. 

Woodward  v.  Newton,  86  0.  G.  490. 

221.  The  case  remanded  to  have  a  decision  having 
regard  to  the  distinctions  pointed  out  above. 

Owens  V.  Richardson,  Jr.,  Ill  0.  G.  1038. 


76  INTERLOCUTORY  MOTIONS  Igg 

222.  A  motion  to  extend  time  for  filing  an  appeal 
should  be  accompanied  by  appeal. 

Greuter  v.  Matthew,  112  0.  G.  253. 

223.  That  the  counts  are  vague  and  indefinite  is  such 
an  irregularity  in  the  declaration  of  an  interference  as  to 
preclude  a  proper  determination  of  the  question  of 
priority.    Dinkel  v.  D'Olier,  113  0.  G.  2507. 

224.  If  the  motion  is  for  the  pui^iose  of  including  ''al- 
lowable claims"  in  another  pending  application  which 
has  been  filed  by  applicant,  the  motion  should  be  accom- 
panied by  a  copy  of  such  claims. 

Normand  v.  Krimmelbein,  115  0.  G.  249. 

225.  The  motion  to  extend  the  time  for  filing  motions 
was  properly  denied  by  the  Examiner,  who  stated  that 
the  reasons  set  forth  might  justify  the  excuse  for  delay 
should  a  motion  be  made. 

Egly  V.  Schulze,  117  0.  G.  276. 

226.  A  motion  to  dissolve  for  non-interference  which 
does  not  specify  w*hicli  of  two  opponents  does  not  inter- 
fere is  irregular  and  should  not  be  transmitted. 

Yreeland  v.  Fessenden  v.  Schloemilch,  117  0.  G. 
2633. 

227.  The  four  grounds  for  dissolving  interferences  re- 
late respectively  to  very  different  matters  and  should 
not  be  confused  with  one  another. 

The  question  raised  by  the  contention  of  non-inter- 
ference in  fact  is  whether  the  claims  as  found  in  the  cases 
of  the  respective  parties  define  one  and  the  same  inven- 
tion, and  the  question  is  independent  of  the  jDatentability 
of  the  claims,  the  right  of  the  parties  to  make  them  or 
any  irregularity  in  the  declaration  of  the  interference. 
Kaczander  v.  Hodges  &  Hodges,  118  0.  G.  836. 

228.  As  pointed  out  in  the  cases  of  Woodward  v.  New- 
ton, 86  0.  G.  490,  and  Owens  v.  Richardson,  111  0.  G. 
1037,  the  four  grounds  for  dissolution  given  in  Rule  122 
have  distinct  meanings  which  should  not  be  confused. 

Pfingst  V.  Anderson,  118  0.  G.  1067. 

229.  A  motion  for  dissolution  should  give  the  oppos- 
ing party  a  reasonably  definite  idea  of  the  j)oints  to  be 
considered  when  the  hearing  is  had. 


±22  INTERLOCUTORY  MOTIONS  77 

The  counts  of  the  issue  against  which  non-interference 
is  alleged  should  be  specified. 

Vreeland  v.  Fessenden  v.  Schloemilch,  119  0.  G. 
1259. 

230.  In  a  motion  to  dissolve  the  bare  allegation  that 
there  is  no  interference  in  fact  is  insufficient. 

The  point  or  points  to  be  argued  should  be  specified 
with  great  particularity.    Not  only  the  count  or  counts, 
but  the  i^articular  element  or  elements  which  are  to  be 
brought  into  question  should  be  specified. 
Dunker  v.  Reist,  119  0.  G.  1925. 

231.  Dissolution  for  non-interference  in  fact  must  be 
based  only  on  those  facts  and  reasons  which  show  that 
the  counts  of  the  issue  have  such  different  meanings  that 
they  might  properly  be  allowed  to  both  parties. 

Townsend  v.  Copeland  v.  Eobinson,  119  0.  G.  2523. 

232.  In  setting  forth  facts  in  motions  for  dissolutions 
the  distinction  between  the  general  grounds  of  dissolution 
which  have  been  pointed  out  in  Woodward  v.  Xewton,  86 
0.  G.  490,  Owen  v.  Richardson,  111  0.  G.  1037,  and  Kacz- 
ander  v.  Hodges  &  Hodges,  118  0.  G.  836,  must  be  care- 
fully observed.  The  observance  of  these  distinctions  is 
necessary  to  the  logical  presentation  of  the  question 
raised  and  to  the  avoidance  of  confusion  in  the  matter  of 
appeals.     Klepetko  v.  Becker,  120. 0.  G.  658. 

233.  It  is  to  be  noted  that  the  motion  does  not  specify 
the  element  or  elements  of  the  counts  which  cannot  be 
read  on  the  two  devices  with  the  same  meaning  and 
gives  no  information  to  the  opposing  parties  of  the  points 
to  be  argued. 

Therefore  the  motion  was  not  in  proper  form  and 
should  not  have  been  transmitted. 

Miller  v.  Mann,  122  0.  G.  730. 

234.  A  motion  to  transmit  because  opponents'  applica- 
tion did  not  originally  contain  the  subject  matter  of  ^ 
combination  claim  must  specify  what  element  or  ele- 
ments of  the  combination  were  wanting. 

Latour  v.  Lundell,  122  0.  G.  1046. 

235.  A  motion  to  dissolve  alleging  non-patentability 
of  the  opposing  parties'  claims  in  view  of  certain  speci- 
fied patents  is  not  indefinite  simply  because  the  patents 
are  enough  to  anticipate  the  claims  of  both  parties. 

Latour  v.  Lundell,  122  0.  G.  1046. 


78  INTERLOCUTORY  MOTIONS  133 

236.  The  recently  established  practice  requiring  def- 
initeness  requires  that  motions  shall  distinctly  and  def- 
initely set  forth  the  points  to  be  argued,  but  not  argu- 
ments themselves. 

Garcia  v.  Pons,  122  0.  G.  139G. 

237.  The  right  of  the  appellant  to  allege  and  urge 
that  there  is  no  interference  in  fact  is  recognized,  but 
under  the  present  practice  of  the  Office  he  is  required  to 
make  clear  upon  what  point  he  intends  to  base  his  argu- 
ments.    Dickinson  v.  Hildreth,  122  0.  G.  1397. 

238.  In  a  motion  to  dissolve  because  of  indefiniteness 
of  the  counts  the  moving  party  should  point  out  wherein 
the  supposed  indefiniteness  lies,  so  that  the  opposing 
party  will  know  the  character  of  the  arguments  that  he 
will  be  called  on  to  meet. 

Berrv,  Kane  &  Stengard  v.  Hildreth,   122  0.  G. 
1722. 

239.  Where  matter  is  set  forth  in  a  motion  for  dissolu- 
tion as  basis  for  one  ground  thereof  which  should  only 
be  considered  in  connection  with  another  and  different 
ground,  the  motion  is  not  in  proper  form  and  should  not 
be  transmitted. 

Corey  v.  Eisman  &  Misar,  122  0.  G.  2063. 

241.  The  statement  contains  no  positive  allegation 
that  certain  terms  appearing  in  the  issue  have  such  dis- 
tinct meaning  when  read  as  claims  in  tlie  different  ap- 
plications that  different  inventions  are  represented  there- 
by in  the  respective  cases. 

Motions  to  dissolve  on  this  ground  are  not  in  proper 
form  unless  they  contain  specific  allegation  of  the  kind 
mentioned. 

Booth,  Booth  &  Flynt  v.  Hanan  &  Gates  v.  Mar- 
shall, 123  0.  G.  319. 

242.  The  only  contentions  and  arguments  which  are  in 
order  in  support  of  motions  to  dissolve  interferences  for 
non-interference  in  fact  where  the  parties  have  made  the 
same  claims  are  those  tending  to  show  that  the  claims 
have  different  meanings  in  the  case  of  the  respective 
parties  notwithstanding  a  perfect  right  upon  the  part  of 
each  partv  to  make  the  claims. 

Goodwin  v.  Smith,  123  0.  G.  998. 


122  INTERLOCUTORY  MOTIONS  79 

243.  The  objection  urged  to  ground  C  is  that  non- 
patentability  of  the  issue  is  alleged  therein,  not  generally 
but  to  Hadaway.  The  objection  is  not  a  valid  one  as  it  is 
conceivable  that  the  claims  might  have  such  different 
meanings  in  the  cases  of  the  respective  parties  as  to  rep- 
resent patentable  subject  matter  in  one  case  and  non- 
patentable  subject  matter  in  the  other. 

Pym  V.  Hadaway,  123  0.  G.  1283. 

244.  It  is  urged  that  if  the  claims  are  literally  con- 
strued they  are  not  patentable  in  view  of  a  certain  speci- 
fied patent,  and  for  this  reason  they  must  be  limited  by 
construction  to  the  specific  device  shown  by  the  res- 
pective parties  and  that  as  so  limited  there  is  no  inter- 
ference in  fact. 

The  question  of  patentability  cannot  be  thus  raised  on 
a  motion  to  dissolve  alleging  non-interference  in  fact. 
Klepetko  v.  Becker,  124  0.  G.  908. 

245.  Grounds  must  be  specific.  If  it  is  alleged  that 
new  matter  has  been  improperly  introduced  the  new 
matter  should  be  jDointed  out. 

Lizotte  V.  Newberth,  1240  G.  1842. 

246.  Robinson's  motion  to  amend  the  issue  does  not 
come  within  the  provisions  of  Rule  109.  The  proposed 
claims  are  claims  not  made  by  either  of  the  opposing 
parties  and  were  asserted  for  the  first  time  in  this  motion. 
Besides  there  was  too  much  delay  in  bringing  the  motion. 

Townsend-Copeland  v.  Robinson,  124  0.  G.  1845. 

247.  In  inaugurating  the  practice  of  requiring  defin- 
iteness  in  motions  to  dissolve  it  was  not  the  intention  to 
require  the  parties  to  give  the  arguments,  but  it  was  the 
intention  that  the  opposite  party  should  be  given  reason- 
able notice  of  the  points  to  be  argued. 

If  the  moving  party  is  of  the  opinion  that  each  of  the 
references  is  a  substantial  anticipation  of  each  of  the 
claims  it  should  be  so  stated;  if  not  the  motion  should 
enumerate  the  reference  in  connection  with  the  claims  to 
which  they  will  be  applied  in  the  argument. 

Hevne,  FTaywood  and  McOarthv  v.  De  Vibbness, 
Jr.,  125  0.  G.  669. 

250.  Where  a  motion  is  made  before  the  Examiner  of 
Interferences   to  set  times  for  taking  testimony  as  to 


80  INTERLOCUTORY  MOTIONS  1  '>'> 

operativeness,  a  showing  of  reasons  which  do  not  apply 
to  applicants'  own  case  must  be  made. 

Clement  v.  Browne  v.  Stroud,  125  O.  G.  992. 

251,  "Where  a  party  makes  a  reasonable  showing  be- 
fore the  Examiner  of  Interferences  tending  to  show  that 
his  opponent  has  no  right  to  make  a  claim,  and  that 
showing  does  not  extend  to  his  own  structure,  he  may  be 
permitted  to  take  testimony  provided  that  the  proposed 
testimony  is  of  a  character  to  justify  such  action. 

Pym  v.  Hadaway,  125  0.  G.  1702. 

252,  Towusend's  argument  that  it  is  useless  for  him 
to  appeal  on  the  cjuestion  of  his  right  to  make  the  chiim 
until  it  is  settled  that  the  claims  are  patentable  is  not 
sound.  As  well  might  he  argue  that  it  would  be  useless 
for  him  to  contest  the  patentability  of  the  claims  as  long 
as  it  was  held  he  had  no  right  to  make  the  claims. 

Townsend  v.  Ehret,  125  0.  G.  2051. 

253,  The  distinction  between  the  several  grounds  for 
dissolution — refused  to  exercise  supervisory  power  upon 
question  of  patentability  under  the  circumstances. 

Daggett  V,  Kaufmann,  127  0,  G.  3641. 

251.  M.  moved  to  dissolve  as  to  one  set  of  counts  if 
the  other  set  were  found  unpatentable  on  T's  motion. 
Transmission  refused  because  it  was  alternative  and  bad 
in  form.     Turner  v,  Macloskie,  128  0,  G.  2835, 

255.  The  statement  that  this  count  ''does  not  involve 
23atentable  invention  over  each  of  the  following  letters 
patent"  after  which  certain  patents  are  specified,  is  a 
sufficient  compliance  with  the  practice  of  the  Office  as  set 
forth  in  He>Tie  et.  al.  v.  De  Yilbiss,  125  0.  G.  1292. 

256.  Nothing  is  alleged  in  this  case  in  supjoort  of  the 
motion  to  dissolve  because  the  counts  have  different 
meanings  in  the  two  apj^lications,  which  may  not  be  fully 
accounted  for  by  lack  of  right  of  one  or  the  other  of  the 
parties  to  make  the  claim,  or  which  indicates  that  any 
other  reason  exists  for  dissolving  the  interference;  under 
these  circumstances  the  refusal  to  transmit  the  motion 
was  right.    Cushman  v.  Edwards,  128  0.  G.  457. 

257.  It  is  not  pointed  out  in  the  motion  what  meaning 
may  be  given  to  counts  4  and  5  in  one  case  that  would 
justify  the  allowance  of  these  claims  to  each  party  with- 


\2'4  INTERLOCUTORY  MOTIONS  81 

out  regard  to  wliicli  was  the  prior  inventor.  Such  a  state- 
ment is  essential  for  transmission  on  the  ground  of 
different  meanings. 

Cushman  v.  Edwards,  128  0.  G.  450. 

258.  Where  claims  have  been  suggested  to  an  appli- 
cant and  he  makes  the  same  under  protest,  accompanying 
the  protest  with  a  statement  that  he  does  not  believe  that 
he  has  a  right  to  make  them,  giving  his  reasons  for  that 
statement,  and  where  after  inspecting  the  other  parties' 
application  he  still  contends  that  he  has  no  right  to  make 
them,  he  should  be  permitted  to  argue  the  question  be- 
fore the  Primary  Examiner.  The  practice  announced  in 
Miller  v.  Perlian,  121  0.  G.  2667,  is  modified  to  this  extent. 

Eichelberger  &  Hibner  v.  Dillon,  129  0.  G.  3161. 
Hermsdorf  v.  Driggs  v.  Schneider,  133  0.  G.  1189. 

259.  Fifteen  patents  were  cited  but  their  pertinency 
was  not  explained.  Should  not  be  transmitted.  (Same 
case.)     Eichelberger  &  Hibner  v.  Dillon,  129  0.  G.  3161. 

260.  The  reasons  given  are  general  and  do  not  ])oint 
out  the  specific  portions  of  the  claims  which  are  alleged 
to  have  different  meanings  in  the  two  applications,  and  is 
too  indefinite  to  be  transmitted. 

Eichelberger  &  Hibner  v.  Dillon,  129  0.  G.  3161. 

261.  Where  the  reasons  for  delay  appear  clearly 
upon  the  record  it  is  unnecessary  to  call  attention  to 
them  in  the  motion  to  transmit. 

Cutler  V.  Carichoff,  130  0.  G.  656. 

262.  If  a  machine  is  alleged  as  an  anticipation  it 
should  be  stated  where  it  can  be  found. 

Brown  v.  Inwood  &  Lavenberg,  130  0.  G.  978. 

263.  The  ground  of  the  motion  based  upon  the  prior 
art  is  entirely  too  indefinite  to  satisfy  the  requirements 
of  the  present  practice.  It  gives  the  opponent  no  inform- 
ation as  to  what  patents  are  to  be  urged  against  the 
respective  counts  or  how  applicant  proposes  the  use  or 
combine  them  to  anticipate  the  inventions  of  the  counts. 

Brown  v.  Inwood  &  Lavenberg,  130  0.  G.  978. 

264.  It  is  stated  in  the  motion  that  each  of  the  counts 
from  1  to  9  inclusive  is  un]^atentablo  in  view  of  tlio  eight 
cited  patents,  and  it  is  said: 

"Each  of  the  counts  is  also  met  in  eacli  of  tlie 
above  ])ntents.  singly  or  in  combination." 


82  INTERLOCUTORY  MOTIONS  132 

This  statement  is  clearly  alternative  and  tlierefore  the 
motion  in  that  particular  instead  of  being  clear  and 
specific,  which  was  the  end  desired  to  be  accomplished  by 
inaugurating  the  present  practice,  is  vague  and  indefi- 
nite. Thullen  v.  Townsend,  130  0.  G.  1312. 
Phillips  V.  Scott,  130  0.  G.  1312. 

265.  Where  a  motion  is  brought  which  in  accordance 
with  the  practice  cannot  be  transmitted,  it  is  no  excuse 
for  the  delay  in  bringing  the  motion  in  proper  form  that 
numerous  appeals  and  petitions  have  been  taken  in  an  at- 
tempt to  have  the  original  motion  transmitted. 

Birantingham  v.  Draver  &  Draver,  130  0.  G.  2720. 

266.  The  first  ground  of  the  motion  is  insufficiently 
stated,  for  the  reason  that  it  is  not  pointed  out  in  what 
respect  the  claims  of  the  issue  comprise  aggregations  and 
not  combinations. 

Papeudell  v.  Bunnell  v.  Keizenstein  v.  Gainsman 
V.  Gillett,  131  0.  G.  362. 

267.  The  second  ground  is  insufficiently  stated  since 
the  difference  in  the  meanings  of  the  claims  are  not 
pointed  out. 

Papendell  v.  Bunnell  v.  Eeinzenstein  v.  Gaisman 
V.  Gillett,  131  O.  G.  362. 

268.  A  motion  to  dissolve  because  the  issue  is  antici- 
pated, must  specify  the  anticipation. 

The  practice  of  allowing  additional  references  to  be 
cited  five  days  before  the  hearing  has  been  discontinued. 
Papendell  v.  Bunnell  v.  Reizenstein  v.  Gaisman 
V.  Gillett,  131  0.  G.  362. 

269.  The  refusal  of  the  Examiner  to  dissolve  the  inter- 
ference on  the  ground  that  there  is  no  interference  in 
fact  was  correct,  notwithstanding  affidavits  which  have 
been  filed  alleging  that  no  confusion  has  resulted  from 
the  use  of  the  marks  referred  to  (Trade  Mark). 

Philadelphia   Watch   Case   Co.    v.    The   Dueber 
Watch  Case  Co.  v.  etc.,  122  0.  G.  1725. 

270.  Dow  cannot  be  permitted  to  establish  the  fact 
that  he  made  the  invention  and  its  date  by  ex  parte 
affidavits.     Dow  v.  Converse,  106  0.  G.  2291. 

271.  Motion  to  dissolve  an  interference,  affidavits  as 


±22  INTERLOCUTORY  MOTIONS  83 

to  operativeness  received.     Motion  to  remove  from  files 
refused.    D.  v.  T.  v.  H.  99  0.  G.  2550. 

1902  C.  D.  202. 
Dickinson  v.  Thibodeau  v.  Hildrett. 

272.  The  allegations  is  in  the  alternative  that  the 
counts  are  "anticipated  or  necessarily  limited",  but  the 
motion  does  not  state  which  counts  he  intends  to  urge 
as  being  anticipated  and  which  limited,  nor  does  it  state 
which  of  the  patents  cited  he  relies  upon  as  showing 
anticipation  and  which  for  restriction  of  the  counts. 

Murphy  v.  Borland,  132  0.  G.  231. 

273.  It  is  not  intended  to  follow  the  technical  rules 
of  the  Court,  but  merely  to  require  that  motions  shall 
clearlv  and  definitelv  set  forth  the  points  to  be  urged. 

Murphy  v.  Borland,  132  0.  G.   231. 

27-1.  Ground  11  does  not  state  what  grounds  it  is  al- 
leged against,  and  for  that  reason  is  indefinite  and  should 
not  be  transmitted.  (125  0.  G.  669.) 

Murphy  v.  Borland,  132  O.  G.  231. 

275.  A  motion  alleging  that  the  opposing  party  has 
no  right  to  make  the  claims  on  account  of  informality 
of  his  specification  is  too  indefinite.  If  petitioner  meant 
that  new  matter  had  been  improperly  introduced  into 
his  opponent's  specification  he  should  have  said  so 
definitelv.        Eoe  v.  Brinkmann,  133  0.  G.  515. 


TRANSMISSION  OF  MOTION. 

(See  "Form  of  Motion.") 

276.  It  is  no  reason  for  refusing  to  transmit  a  motion, 
that  the  question  has  been  considered  ex  parte. 

Eeynolds  v.  Haberman,  49  0.  G.  130. 

277.  When  motion  in  proper  form  and  made  within 
the  former.  For  these  reasons  grounds  7,  and  9,  should 
the  time  limit  the  Ex.  of  Interferences  cannot  refuse  to 
transmit  it.    Cammet  v.  Hallett,  93  0.  G.  939. 

278.  Motion  to  transmit  in  order  to  consider  the  ques- 
tion of  shifting  the  burden  of  proof.  Ex.  of  Interf.  only 
decides  if  it  is  in  proper  form. 

Sheppard  v.  Webb,  94  0.  G.  1577. 


84  *  INTERLOCUTORY  MOTIONS  ±22 

279.  These  motions  should  not  be  transmitted  previous 
to  the  approval  of  the  preliminarv  statements. 

Wliipple  V.  Sharp,  96  0.  G.  2229. 

280.  If  the  motion  is  made  within  the  twenty  day 
limit  the  Examiner  of  Interferences  seems  to  have  no  dis- 
cretion but  to  transmit  the  motion.  If  made  after  that 
time  it  is  a  matter  of  discretion  and  will  not  be  disturbed 
except  when  there  has  been  an  abuse  of  this  discretion. 

The  specific  facts  upon  which  a  motion  to  dissolve  is 
based  need  not  be  stated  when  the  only  facts  relied  upon 
are  disclosed  in  the  record. 

Winter  v.  Slick  v.  Vollkonnner,  97  0.  G.  1837. 

281.  Eitter's  motion  to  dissolve  was  based  upon  the 
testimonv  taken  and  was  properlv  refused  transmission. 

Eitter  v.  Kralkaw  &  Connor,  104  0.  G.  1897. 

282.  In  the  absence  of  an  explanation  of  the  delay  the 
motion  will  not  be  transmitted,  or  when  the  cause  for 
dissolution  arises  out  of  the  testimonv. 

Hopkins  v.  Scott,  105  0.  G.  1263. 

283.  A  motion  to  transmit  an  amendment  canceling- 
claims  before  statements  filed  will  not  be  transmitted 
under  this  rule. 

Colley  V.  Copenhaver,  107  0.  G.  268. 

284.  One  party  appealed  to  the  Board  on  the  question 
of  patentability  but  recommended  changes. 

The  motion  to  transmit  for  reformation  and  dis- 
solution should  be  denied  as  it  appears  that  no  good  pur- 
pose would  be  served  therebv. 

Brown,  Lindmark,  109  0.  G.  1071. 

285.  It  is  not  ground  for  a  motion  to  transmit  because 
the  Examiner  has  requested  such  a  course  in  another  case. 

Parkin  &  Parkin  v.  Eiotte,  109  0.  G.  1335. 

286.  As  a  general  rule  motions  to  dissolve  an  inter- 
ference are  not  transmitted  when  the  reasons  for  bringing 
the  same  arise  out  of  the  testimonv.  (Felbel  v.  Oliver, 
92  0.  G.  2339.) 

Winton  V.  Jeffrey,  112  0.  G.  500. 

287.  When  an  applicant  has  had  ample  opportunity 
to  present  such  claims  as  he  wished  and  had  presented 
several  sets,  a  motion  to  transmit  the  interference  in 
order  to  permit  the  Examiner  to  consider  another  set  of 
claims  was  properlv  denied. 

Scott  V.  Emmet  &  Hewlett,  116  0.  G.  1184. 


122  INTERLOCUTORY  MOTIONS  85 

289.  AVliere  a  motion  for  dissolution  is  brought  long- 
after  the  time  fixed  by  the  rules  and  is  based  upon 
patents  discovered  six  months  before  the  motion  was 
made,  the  motion  should  not  be  transmitted  to  the  Exam- 
iner for  consideration. 

Wilcox  V.  Xewton,  116  O.  G.  1452. 

290.  A  motion  to  dissolve  should  not  be  transmitted 
when  the  Commissioner  has  ruled  upon  the  point  in- 
volved.    Egly  V.  Schulze. 

291.  A  decision  of  the  Examiner  of  Interferences  re- 
fusing to  transmit  will  not  be  disturbed  unless  it  is  shown 
that  it  was  clear! v  erroneous. 

Dann  v.  Halliday,  119  0.  G.  2236. 

292.  The  Examiner  of  Interferences  properly  refused 
to  transmit  to  the  Primary  Examiner  motions  which  the 
Primarv  Examiner  has  no  authoritv  to  decide. 

Becker  &  Patiz  v.  Edwards,  123  0.  G.  1990. 

293.  A  motion  to  transmit  for  inserting  claims  that: 
it  appears  from  a  decision  of  the  Primary  Examiner  in 
the  case  cannot  be  made  by  the  party,  should  be  refused. 

Townsend  v.  Copeland  v.  EolDinson,  124  0.  G.  623. 

294.  Where  no  testimony  has  been  taken  and  there 
is  no  objection  by  the  other  parties  wlio  have  made  simi- 
lar motions — a  motion  to  transmit  to  reform  the  issue 
should  be  granted. 

Townsend  v.  Copeland  v.  Eobinson,  124  0.  G.  623. 
(But  see  same  case  124  0.  G.  1845). 

295.  The  transmission  of  a  motion  tiled  outside  of  the 
regular  time  is  a  matter  resting  largely  within  the  dis- 
cretion of  the  Examiner  of  Interferences  (cases). 

Bastian  v.  Champ,  126  0.  G.  2837. 

296.  A  motion  to  amend  the  specification  involved  in 
an  interference  for  the  purpose  of  curing  an  alleged  error 
therein  should  not  be  transmitted. 

Wheeler  v.  Palmros,  133  0.  G.  230. 
(See  also  note  to  109). 

297.  A  motion  based  on  defective  oath  should  not  be 
transmitted.     Rowe  v.  Brinkmann,  133  O.  G.  515. 

298.  An  indefinite  motion  should  not  be  transmitted. 
Rowe  V.  Brinkmann,  133  0.  G.  515. 


86  INTERLOCUTORY  MOTIONS  J^23 

PETITION  TO  EXTEND  TIME. 

299.  A  petition  to  extend  the  limit  of  appeal  to  include 
an  appeal  filed  after  the  expiration  thereof  must  be  sup- 
ported by  verified  showing  in  excuse  for  the  delav. 

Kletzker  &  Goesel  v.  Dodson,  109  0.  G.  1336. 
Autenrith  &  Eane  v.  Soresen,  120  0.  G.  2126. 

300.  When  an  appeal  is  filed  after  the  time  limited  it 
should  be  accompanied  bv  a  motion  to  restore  jurisdic- 
tion.    Greuter  v.  Mathiew"^,  112  0.  G.  253. 

301.  As  the  present  motion  is  not  accompanied  by 
affidavits  showing  why  appeal  has  not  been  taken  to  the 
Examiner-in-Chief  within  the  limit  of  appeal  originally 
set,  it  has  no  standing  and  must  be  dismissed  from  fur- 
ther consideration. 

Kletzker  &  Goesel  v.  Dodson,  109  0.  G.  1336. 

110  0.  G.  305-308. 

302.  Although  the  date  of  a  reference  relied  upon  in 
a  motion  to  dissolve  alleging  anticipation  of  the  issue  is 
later  than  the  date  of  conception  set  in  the  preliminary 
statement  of  the  opposing  party,  the  motion  may  never- 
theless be  transmitted  in  order  that  the  Primary  Exam- 
iner may  consider  the  pertinency  of  the  reference  and 
permit  the  filing  of  an  affida\^t  alleging  the  facts  re- 
quired by  Eule  75,  outside  of  those  contained  in  such 
preliminary   statement. 

Martin  v.  Goodman  v.  Dvson  v.  Suttig  &  Good- 
rum,  130  0.  G.  1485. 
(See  note  in  subject  matter.) 

303.  Xo  reasons  being  given  in  support  of  the  reasons 
for  dissolution,  transmission  was  properlv  refused. 

Miller  V.  Wallace,  131  0.  G.  1689." 

304.  The  original  counts,  1  and  2,  stand  so  related  to 
the  added  counts  that  whatever  conclusion  the  Exam- 
iner reaches  regarding  the  dissolution  of  the  interference 
as  to  the  latter  counts  would  jorobably  be  applicable  to 
be  transmitted  as  to  all  counts. 

Murphy  v.  Borland,  132  0.  G.  231. 

305.  A  motion  alleging  informality  showing  that  the 
real  grounds  relate  to  the  right  of  a  party  to  make  the 
claim  should  not  be  transmitted. 

Danquard  v.  Courville,  131  0.  G.  2421. 


132  INTERLOCUTORY  MOTIONS  87 

306.  W'here  a  party  actin^i^  in  good  faith  files  a  motion 
which  is  held  to  be  indefinite  and  an  amended  motion 
covering  the  informality  is  promptly  filed  within  the 
limit  of  appeal  set  from  the  prior  decision,  the  Examiner 
of  Interferences  should  transmit  the  second  or  amended 
motion.  He  cannot,  however,  be  permitted  to  present  his 
case  experimentally.  The  first ,  motion  having  been 
denied  because  not  sufficiently  definite  and  decisions 
cited,  the  second  motion  should  have  cured  the  defect, 
a  third  motion  refused  transmission. 

Gold  V.  Gold,  131  0.  G.  1422. 

Eockstroh  v.  Warnick,  131  0.  G.  234. 

Papendell  v.  Bunnell  v.  Eeizenstein  v.  Gaisman 
V.  Gillette,  132  0.  G.  1837. 


EVIDENCE— AFFIDAVITS. 

307.  Affidavits  received  on  both  sides  as  to  public  use. 
Young  V.  Hoard,  1870  C.  D.  59. 

308.  Affidavits  received  as  to  utility  of  device. 
Hunger,  1869  C.  D.  3. 

Cheesbvough,  1869  C.  D.  18, 

backed  bv  affidavits  of  others. 
Harris,  1870'  C.  D.  62. 
Phillips,  1871  C.  D.  273. 
Richardson,  1872  C.  D.  144. 

309.  As  to  the  former  practice  of  invention. 
AVilliam  Thie,  1870  C.  D.  61. 

The  affidavits  of  experts. 

310.  Ex  parte  affidavits  are  not  competent  to  estab- 
lish the  statutorv  bar  of  two  vears'  public  use. 

Wicks  &  Wyman  v.  Knowles,  11  0.  G.  196. 
Anson  v.  Woodbury,  12  0.  G.  1. 

311.  It  is  not  enough  for  the  applicant  to  charge 
fraud,  which  is  never  presumed,  but  must  always  be 
strictly  proved,  and  then  to  demand  that  he  be  relieved 
from  "the  burden  of  proof  which  the  law  has  imposed 
upon  him.  Such  a  course  will  not  shift  the  burden  of 
proof.     Hansen  v.  Davis,  1891  C.  D.  72. 

312.  If  the  operativeness  of  the  device  is  denied, 
whether  on  a  motion  to  dissolve  the  interference,  or  in  any 
other  ])roc('cding,  tlic  a|)])li('aiit  lias  a  right,  under  Eule 


88  INTERLOCUTORY  MOTIONS  ±22 

31  (76)  to  submit  affidavits  in  pi'oot'  of  tlie  oi:>erativeness 
of  liis  invention. 

An  ap]:»lieant  cannot  l)y  indirection  l)e  de])rived  of  the 
benefit  of  tliis  rule. 

Fuller  V.  Brush,  79  C.  D.  828,  16  0.  (I.  1188. 

ol.").     This  rule  (76)  is  in  accordance  with  law. 
Hidges  V.  Daniels,  1880  C.  D.  64. 

.■)14.  The  Conmiissioner  is  not  authorized  to  reject  an 
aijplication  on  the  ground  of  more  than  two  years'  public 
use  and  sale,  on  c.v  parte  affidavits,  without  giving  the 
ai)plicant  an  opportunity  to  cross-examine  the  affiants. 
The  proof  should  conform  to  the  fundamental  canons  of 
the  law  of  evidence. 

Alteneck,  23  0.  G.  269. 

Decision  by  the  Supreme  Court  of  the  District  of 
Columbia. 

315.  Public  use  and  sale  asserted,  and  affidavits  tend- 
ing to  establish  such  facts  filed,  an  order  that  all  files  be 
forwarded  to  the  Commissioner.  Upon  examining  the 
affidavits  and  files,  an  order  issued  requiring  applicant 
to  show  cause,  at  a  certain  date,  assigned,  why  an  order 
directing  an  inquiry,  into  the  question  of  public  use  and 
sale,  should  not  be  made.  A  copy  of  order  directed  to  be 
served  on  a]3plicant. 

Barricklo,  37  0.  G.  672. 

See  also  Barricklo,  38  0.  G.  417. 

316.  The  oaths  of  the  applicant  that  he  is  the  first  and 
original  inventor  and  does  not  know  and  does  not  believe 
that  the  same  was  ever  before  known  or  used,  and  that 
letters  patent  for  the  same  invention  for  the  United  King- 
dom of  Great  Britain  and  Ireland  have  been  granted  to 
Charles  William  Siemens,  as  a  communication  from 
abroad  bearing  date  the  5th  of  June,  1873,  etc.,  is  suffi- 
cient to  identify  the  applicant  with  the  British  patentee, 
so  as  to  defeat  a  motion  to  dissolve  the  interference  on 
the  ground  that  the  same  invention  was  described  in  said 
previous  British  patent. 

Van  Alteneck  v.  Thompson,  17  0.  G.  57. 

317.  Where  on  final  hearing  before  the  Commissioner 
an  interference  is  sus])ended  and  the  case  remanded  to 
the  Primary  Examiner  for  consideration  of  the  question 
of  operativeness,  this  question  will  not  be  considered 
infer  partes  but   will    be   determined   by   the   Examiner, 


133  INTERLOCUTORY  MOTIONS  89 

subject  to  the  regular  course  of  appeal  in  c.v  parte  pro- 
ceedings.    Archer,  1891  C.  D.  191. 

57  0.  G.  696. 

318.  The  affidavit  of  a  party  that  the  device  was  oper- 
ative is  questionable  in  view  of  the  fact  that  the  testi- 
monv  of  others,  who  were  not  produced,  was  accessible. 

Kelly  V.  Flyn,  92  0.  G.  1237. 

319.  Affidavit  of  Expert  received  and  considered  as 
to  identity  of  invention. 

Felbel  v.  Oliver,  92  0.  G.  2339. 

320.  Motion  to  dissolve  an  interference,  affidavits  as 
to  operativeness  received.  Motion  to  remove  from  files 
refused.     Dickinson  v.  Thibodeau  v.  Hildreth,  99  0.  G. 

2550.  1902  C.  D.  202. 

321.  Dow  cannot  be  permitted  to  establish  the  fact 
that  he  made  the  invention  and  its  date  by  ex  parte  affi- 
davits.    Dow  V.  Converse,  106  0.  G.  2291. 

322.  Affidavits  as  to  interference  in  fact  and  as  to 
scope  of  claims  in  snp])ort  of  motion  under  Rule  122  re- 
fused.    Dickinson   v.   Thibodeau  v.  Hildreth,  99   O.   G.- 

2550. 
Summers  v.  Hart,  98  0.  G.  2585. 

323.  AYliere  certain  ])atents  and  publications  are  re 
ferred  to  on  a  motion  to  dissolve,  and  opposing  party 
states  on  the  record  that  he  has  no  objection  to  their  con- 
sideration, although  five  days'  notice  has  not  been  given, 
the  reference  should  be  considered. 

Lake  v.  Cahill,  110  0.  G.  2235. 

324-.    A  party's  rights  are  not  limited  by  proceedings 
had  in  another  interference  between  different  parties. 
Gray  v.  :McK:enzie  v.  McElroy,  113  0.  G.  1968. 

325.  Where  there  were  two  attorneys  of  record  the 
sickness  of  one  is  not  sufficient  excuse  for  neglect  to  look 
up  evidence. 

Ingoldsby  v.  Bellows,  113  0.  G.  2214. 

326.  If  the  Examiner  when  the  case  is  reached  for 
action  rejects  claims  on  the  ground  of  non-invention  the 
applicant  may  undoubtedly  present  in  response  to  such 
rejection  and  have  admitted  affidavits  which  include  so 
much  of  the  present  affidavits  as  relate  to  the  merits  and 
efficiencv  of  his  device,   but   which   omit   the  irrelevant 


90  INTERLOCUTORY  MOTIONS  l^'^i 

statements  made  in  tlie  affidavits  eoncerning  tlie  devices 
of  others.       Robinson,  115  0.  G.  1584. 

327.  The  refusal  of  the  Examiner  to  dissolve  the  in- 
terference on  the  ground  that  there  is  no  interference  in 
fact  was  correct,  notwithstanding  affidavits  which  have 
been  filed  alleging  that  no  confusion  has  resulted  from 
the  use  of  the  marks  referred  to.     (Trade  Mark.) 

Philadelphia   Watch   Case   Co.   v.   The   Dueller 
Watch  Case  Co.  v.  etc.,  122  0.  G.  1725. 

328.  I  am  of  the  opinion  that  testimony  upon  the 
operativeness  of  the  device  disclosed  by  the  senior  party 
should  be  accepted  and  considered  in  determining  wbo 
is  the  prior  inventor  in  this  case,  provided  a  prima  facie 
case  of  imperativeness  is  made  out  and  a  satisfactory 
showing  is  presented  that  the  ])roposed  evidence  is  of  a 
character  to  justify  opening  the  case  for  taking  testi- 
mony. 

Whether  testimony  may  be  taken  in  this  case  should  be 
determined  in  the  first  instance  by  the  Examiner  of  Inter- 
ferences.   Lowry  &  Cowley  v.  Spoon,  122  0.  G.  2687. 

329.  Consideration  of  affidavits  upon  motions  to  dis- 
solve is  not  a  right  which  the  parties  are  entitled  to 
demand.  The  rights  of  parties  on  such  motions  extend 
no  further  than  is  expressly  provided  by  rules  of 
practice.  Usually  will  extend  no  further  than  testimony 
and  rebuttal. 

Browne  v.  Stroud,  122  0.  G.  2689. 

330.  Affidavits  as  to  inoperativeness  of  opponent's 
device  in  interference  cases  proper  for  making  a  prima 
facie  case.    Lowry  &  Cowley  v.  Spoon,  124  0.  G.  1846. 

331.  Affidavits  as  to  operativeness  of  opponent's  de- 
vice in  an  interference  proceeding. 

Clement  v.  Brown  v.  Stroud,  125  0.  G.  992. 

332.  Ex  parte  affidavits  as  to  intervening  rights  in 
interference  cases. 

Donning  v.  Fisher,  125  0.  G.  2765. 

333.  No  testimony  as  to  inoperativeness  or  public  use 
previous  to  motion  to  dissolve. 

Barber  v.  Wood,  127  0.  G.  1991. 

334.  Public  use  is  considered  in  the  practice  of  this 
Office  as  a  separate  question,  requiring  an  investigation 
independent  of  the  question  of  priority  of  invention  in- 


133  INTERLOCUTORY  MOTIONS  91 

volved  in  an  interference  proceeding.  Xo  testimony  lias 
been  taken,  and  there  is  nothing  in  the  case  upon  which 
the  Primary  Examiner  at  the  jDresent  time  can  intelli- 
gently consider  the  bar  of  joublic  use.  Xo  error  is  found 
in  the  refusal  to  transmit  on  this  ground. 

Davis  V.  Swift,  96  0.  G.  2409. 

Shruni  v.  Baumgarten,  104  0.  G.  577. 

335.  An  ex  parte  affidavit  is  not  enough  to  carry  a 
party's  filing  date  back  to  that  of  a  foreign  application 
and  change  the  burden  of  proof. 

Raulett  &  Nicholson  v.  Adams,  114  0.  G.  827. 

336.  These  affidavits  as  to  operativeness  of  invention 
may  be  tiled  notwithstanding  an  interference  has  been 
dissolved  because  of  the  inoperativeness  of  the  device. 

Mark,  117  0.  G.  2636. 

337.  An  affidavit  refused  consideration  on  the  ground 
that  certain  testimony  referred  to  therein  was  not  prop- 
erly authenticated  as  to  officer  taking  it. 

Brown  v.  Inwood  &  Savenberg,  131  0.  G.  1423. 

338.  The  matter  at  issue  in  an  interference  proceeding 
and  a  public  use  proceeding  are  different,  and  it  is  for  this 
reason  that  testimony  taken  on  the  cpiestion  of  priority 
in  an  interference  is  not  used  on  the  issue  of  public  use 
without  further  proceedings,  in  which  the  party  adversely 
affected  is  given  an  opportunity  to  cross-examine  the 
witnesses  with  that  issue  framed  and  to  produce  witnesses 
to  explain  the  evidence.  (Weber,  101  0.  G.  2570.)  For 
the  same  reason  testimony  taken  in  the  public  use  pro- 
ceeding cannot  be  held  conclusive  of  the  question  of 
priority  of  invention,  and  should  not  be  used  against 
Gilman  without  the  institution  of  a  second  interference. 

Ex  parte  Menzelman  &  Overholt,  132  0.  G.  232. 

339.  Where  both  parties  are  applicants  and  under 
the  head  of  informality  in  declaring  the  interference  it 
is  alleged  in  a  motion  to  dissolve  that  the  claims  do  not 
apply  to  the  structure  of  either  party.  HELD  that  this  is 
not  such  an  admission  as  to  justify  a  decision  on  priority 
adverse  to  the  moving  partv.  The  case  of  Lipe  v.  Miller, 
109  0.  G.  1608,  distinguished. 

Danquard  v.  Courville,  131  O.  G.  2421. 


92  INTERLOCUTORY  MOTIONS  J  *J2 

DELAY    IN    BRINGING    MOTION,    ETC.— EXCUSE 
FOR  SECOND  MOTION. 

340.  A  motion  niade  and  judgment  passed  upon  it 
res  adjudicata  and  cannot  be  entertained  a  second  time 
upon  the  same  state  of  facts. 

Little  V.  Little,  Pillard  ife  Sargent,  10  0.  G.  543. 

341.  The  rules  contemplate  that  a  motion  to  dissolve 
the  interference  on  the  ground  of  non-patentability  of 
the  subject  matter  when  the  facts  on  which  it  is  based  are 
known  should  be  made  at  the  outset. 

Such  a  motion  by  a  defeated  party  refused  after  judg- 
ment because  of  tlie  delay. 

Blinn  V.  Gale,  16  0.  G.  459. 

342.  A  motion  to  dissolve  an  interference  based  on 
non-interference  or  an  irregularity  in  the  declaration 
may  be  heard  and  decided  at  any  time  before  final  judg- 
ment, subject  to  appeal  to  the  Commissioner. 

Banks  v.  Snediker,  16  0.  G.  1096. 

343.  It  is  not  an  abuse  of  discretion  for  the  Examine]- 
of  Interference  to  grant  a  motion  to  transmit,  after  the 
20  day  limit,  provided  the  status  of  the  case  has  not 
changed.     Keynolds  v.  Haberman,  97  0.  G.  1837. 

344.  It  is  not  a  sufficient  excuse  that  one  part}^  did  not 
discover  that  his  opponent's  application  did  not  inter- 
fere until  testimony  was  taken. 

Felbel  v.  Oliver,  92  0.  G.  2339. 

345.  The  motion  to  dissolve  should  not  be  granted  in 
view  of  the  delay,  etc. 

Annand  v.  Spalackhaver,  93  0.  G.  753. 

346.  When  a  motion  to  dissolve  is  not  made  within  the 
time  fixed  by  Eule  122,  it  is  permissible  to  consider  the 
probability  of  the  grant  of  the  motion,  etc. 

Annand  v.  Spalckhaver,  93  0.  G.  753. 

347.  The  20  days  having  elapsed  a  motion  to  restore 
jurisdiction  to  the  Examiner  of  Interference  for  the  pur- 
pose of  moving  to  dissolve  should  be  accompanied  by  the 
motion  to  dissolve. 

If  such  latter  motion  cannot  be  made  within  the  time 
limit  it  should  be  made  as  soon  thereafter  as  possible. 
Niedermeyer  v.  Walton,  97  0.  G.  2306. 


132  INTERLOCUTORY  MOTIONS  93 

348.  In  case  of  discovering  new  facts  after  granting 
the  motion  to  transmit  to  the  Primary  Examiner,  he  may 
consider  such  facts  provided  due  and  timely  notice 
thereof  be  given  to  the  party  oposing  the  motion.  A 
petition  to  amend  is  unnecessarv. 

Kurz  V.  Jackson  &  Pierce,  98  0.  G.  2586. 

349.  Whether  a  delay  beyond  the  time  limited  shall 
be  excused  lies  somewhat  within  the  discretion  of  the 
Examiner.     99  0.  G.  1383. 

350.  When  a  second  motion  to  transmit  is  made  on  the 
ground  of  newly  discovered  evidence  it  is  proper  for  the 
Examiner  of  Interferences  to  consider  the  question  of 
due  diligence. 

Whitlock  &  Huson,  99  0.  (i.  1385. 

351.  A  motion  pending  under  this  rule  is  not  a  bar  to 
a  motion  under  Rule  109,  nor  does  it  excuse  delav. 

Perrussel  v.  Wichmann,  99  0.  G.  2970. 

352.  If  a  motion  is  not  made  within  the  20  days  lim- 
ited, the  burden  is  upon  the  mover  to  show  that  it  could 
not  have  been  sooner. 

Xiedringhaus    v.    Marquard    v.  McDonnell,   101 
0.  G.  1610. 

353.  Delay  in  making  motion  excused  in  view  of  the 
cost  of  obtaining  a  copy  of  opposite  party's  application, 
the  difficulty  of  getting  the  money  for  the  same,  and  the 
complicated  nature  of  the  case. 

In  the  above  case  the  delav  was  also  due  in  part  to  the 
Office.    Kletzer  &  Goesel  v.  Dodson,  101  0.  G.  2822. 

354.  Under  the  circumstances  of  this  case  even  admit- 
ting that  Miller  did  not  appreciate  the  pertinency  of  the 
patents  referred  to  till  April  21,  1903,  a  delay  of  over  a 
month  in  bringing  his  motion  after  this  date  was  not 
exercising  due  diligence. 

The  affidavit  accompanying  witness'  motion  is  de- 
fective in  that  it  does  not  appear  therefrom  that  the 
patents  on  which  he  relies  to  anticipate  the  issue  could 
not  have  been  obtained  earlier  by  the  exercise  of  reason- 
able diligence. 

Lipe  V.  Miller,  105  0.  G.  1532. 

355.  As  the  applicant  has  made  no  satisfactory  show- 
ing that  the  references  could  not  have  been  found  before, 
and   the   motion  presented   earlier   to   grant   his   appeal 


94  INTERLOCUTORY  MOTIONS  133 

would,  in  effect  nullify  the  clause  in  Rule  122  requiring 
sucli  motions  to  be  made  within  20  days  following  the 
approval  of  the  preliminary  statement. 

Sturgis  &  Hopewell,  109  0.  G.  1067. 

356.  When  no  testimony  has  been  taken  and  the  delay 
is  slight,  the  motion  may  be  entertained. 

Harrison  v.  Shoemaker,  109  0.  G.  2170. 

357.  A  second  motion  to  transmit  considered  as  a 
motion  for  a  new  trial  and  no  limit  of  appeal  set. 

Goodfellow  v.  Jolly,  110  0.  G.  602. 

358.  It  appears,  therefore,  that  the  real  reason  for 
bringing  the  motion  at  this  time  is  a  change  of  purpose, 
arising  from  the  fact  that  the  applicant  has  appointed  a 
new  attorney.  Such  reason  is  not  sufficient  excuse  for 
the  delay.     Rayburn  y.  Strain,  110  0.  G.  603. 

359.  Where  parties  have  not  seen  each  other's  state- 
ments a  slight  delay  may  be  excused. 

Doble  y.  Eckhart  y.  Henry,  110  0.  G.  604. 

360.  After  20  days  the  burden  of  proof  is  upon  appli- 
cant to  show  diligence.  In  the  absence  of  such  showing 
a  refusal  to  transmit  is  proper.  The  pendency  of  a  motion 
to  shift  the  burden  of  proof  is  no  excuse. 

:\lcArthur  &  Gilbert,  111  0.  G.  1621. 

361.  The  fact  that  an  alleged  anticipating  jjatent  was 
not  discovered  until  the  expiration  of  the  time  limit  not 
considered  sufficient  excuse. 

Schirmer  y.  Lindemann  &  Stock,  111  0.  G.  2222. 

362.  The  pendency  of  a  motion  for  dissolution  is  no 
good  reason  for  delay  in  bringing  a  motion  to  shift  the 
burden  of  proof.  (See  Mc Arthur  y.  Gilbert,  111  O.  G. 
1621.)     Harvey  v.  Lubbers  v.  Easpillaire,  112  0.  G.  1215. 

363.  A  second  motion  for  dissolution  will  not  be 
entertained  unless  there  is  good  showing  why  new  rea- 
sons advanced  were  not  presented  at  the  time  of  the  first 
motion.     Hedlund  v.  Curtis,  113  0.  G.  1419. 

364.  The  pendency  of  a  motion  to  dissolve  by  one 
party  does  not  excuse  delay  in  making  such  a  motion  by 
another  party. 

Jackson  v.  Cuntz,  115  0.  G.  510. 

365.  The  excuse  for  delay  in  bringing  motion  was  the 
non-discovery  of  a  German  patent. 


^22  INTERLOCUTORY  MOTIONS  95 

Some  of  the  ^rounds  alleged  had  nothing  to  do  with 
the  German  ])atent  and  therefore  that  was  no  excuse 
for  delaying  the  motions  on  these  grounds.  No  reason 
why  the  Grerman  patent  was  not  discovered  earlier  was 
given  and  no  sufficient  excuse  was  given  for  the  delay  of 
more  than  two  months  after  such  discovery, 

"Tlie  pendency  of  an  appeal  upon  the  first  mo- 
tion, which  had  been  decided  against  him  is  no  excuse." 

Pfingst  V.  Anderson,  117  0.  G.  597. 

366.  A  mere  change  of  opinion  after  retention  of  new 
counsel  will  not  justify  transmission  of  the  motion  for 
dissolution  long  after  (two  months)  the  time  when  it 
should  have  been  brought. 

Carver-v.  McCanna,  117  0.  G.  7m. 

377.  It  is  against  the  policy  of  the  Office  to  permit 
piecemeal  motions  in  interference  cases. 

Egly  V.  Schulze,  117  0.  G.  276. 

378.  Unexcused  delay  in  bringing  motion. 
Carney  v.  Latimer,  119  0.  G.  6522. 

379.  That  one  was  not  able  to  get  copies  of  papers 
within  the  20  days'  limit  received  as  an  excuse.  It  was 
however  unnecessarv  to  allege  the  pa]iers  were  furnished 
by  the  Office.    Steinmetz  v.  Thomas,  119  0.  G.  1260. 

380.  If  the  excuse  for  delay  in  bringing  a  motion  does 
not  cover  the  entire  time  the  motion  should  not  be  trans- 
mitted.    McKee  v.  Baker,  120  0.  G.  657. 

381.  The  provisions  of  Rule  122  requiring  motions  to 
be  brought  if  possible  within  a  time  fixed  is  conducive 
to  orderly  procedure  and  must  be  enforced.  The  Exam- 
iner of  Interference  was  right  in  refusing  to  transmit  a 
motion  not  made  in  time  and  unaccompanied  by  a  proper 
excuse.     Townsend  v.  Copeland  v.  Eobinson,  124  0.  G. 

1210. 

382.  "Where  an  amendment  to  a  motion  was  filed  after 
the  time  limit  had  expired,  the  original  motion  having 
been  filed  in  time  and  no  delay  being  occasioned,  held 
that  the  time  of  filing  the  amendment  was  no  objection. 

Smith  V.  Fox,  130  0.  G.  1312. 

383.  Motions  on  ground  of  inoperativeness  are  not 
favored  and  it  is  iiuMimbent  upon  one  bringing  them  to 
do  so  promptly. 

Joslyn  V.  Hulse,  130  0.  G.  1689. 


96  INTERLOCUTORY  MOTIONS  133 

38J-.  In  response  to  an  order  to  show  cause  under 
Eule  114  applicant  moved  to  dissolve  for  non-patentabil- 
ity of  issue,  but  was  not  sufficiently  specific  in  api)lyini>- 
references,  amendment  filed  seven  days  after  limit. 

In  view  of  this  attempt  to  apply  the  references,  the 
Ijromptness  with  which  the  second  motion  was  filed, 
and  the  fact  that  refusal  of  the  motion  will  be  fatal  to 
appellant's  case,  it  is  thought  that  the  last  motion  to 
dissolve  should  be  transmitted  to  the  Primarv  Examiner. 
Anser  v.  Pierce,  Jr.,  131  0.  G.  359. 

385.  A  junior  party,  cited  to  show  cause  why  judg- 
ment should  not  be  rendered  against  him  on  the  record, 
may  move  to  dissolve  for  non-patentability  of  the  issue. 

Papendell  v.  Bunnell  v.  Eeizenstein  v.  Gaisman 
V.  Gillett,  131  0.  G.  362. 

386.  The  bringing  of  motions  or  the  taking  of  peti- 
tions to  the  Commissioner  will  not  stay  the  running  of 
the  limit  of  appeals  from  a  decision  on  prioritv. 

Pym  V.  Hadaway,  131  0.  G.  692. 

387.  As  to  claims  involved  in  a  second  interference 
between  the  same  parties  which  could  have  been  made  in 
the  first  interference,  HELD  that  a  final  decision  in  the 
first  interference  on  the  question  of  priority  renders  that 
C[uestion  res  adjudicata. 

Hopkins  v.  Xewman,  131  0.  G.  1161. 

388.  It  is  well  settled  that  piece-meal  action  cannot 
be  permitted,  but  where  a  party  acting  in  good  faith  files 
a  motion  which  is  held  to  be  indefinite,  and  an  amended 
motion  curing  the  informalities  is  promptly  filed  within 
the  limit  of  appeal  set  from  the  previous  decision,  the 
amended  motion  should  be  transmitted. 

Gold  V.  Gold,  131  0.  G.  1422. 
See,  however,  Eockstroh  v.  "\Varnock,  132  O.  G. 
234. 

389.  A  second  interference  between  the  same  parties 
upon  the  same  subject-matter  should  not  be  instituted. 

AVenzelman  &  Overholt,  132  0.  G.  232. 

390.  Delay  not  relieved  against  by  re-declaration  to 
include  additional  counts. 

Murphy  V.  Borland,  132  0.  G.  231. 

391.  Transmission  of  motion  to  dissolve  refused  in 
view  of  the  fact  that  the  excuse  for  delav  was  insuffi- 


122  INTERLOCUTORY  MOTIONS  97 

cient  in  that  it  alleged  that  business  of  great  importance 
l^revented  him  from  consulting  his  attorney  in  time,  but 
did  not  show  why  the  matter  could  not  be  attended  to  ])y 
correspondence. 

Blackmore  v.  Hall,  132  0.  G.  1387. 

392.  The  pendency  of  a  motion  to  shift  the  burden  of 
proof  is  no  excuse  for  the  delay  in  bringing  a  motion  to 
dissolve.     Price  v.  Blackmore,  133  0.  G.  514. 

McArthur  v.  Gilbert,  111  0.  G.  1621. 

392a.  In  the  absence  of  ]wsitive  written  law  exclud- 
ing Sundays  from  the  period  of  time  prescribed  for  any 
purpose,  they  are  counted,  even  though  the  period  ends 
on  Sunday.  (Lewis  Southerland  Statutory  Construction, 
Vol.  I,  p.  335.)  The  same  rule  is  ai^plicable  to  holidays. 
(Trade  mark.) 

Robert  A.  Keaslev  Companv  v.  Portland  Cement 
Fabrik  Hemmor,  133  0.  G.  1936. 

EXPEDITING  PROCEEDINGS.     EXAMINER'S 
ACTIONS— TIME  LIMIT. 

393.  Motions  under  this  rule  formerly  required  to  be 
noticed  for  hearing  within  the  time  limited  for  appeal, 
so  that  the  jurisdiction  should  not  be  lost. 

Meyrose  v.  Jahn,  56  0.  G.  1417,  1891  C.  D.  145. 

394.  The  decision  must  be  confined  to  the  question 
presented.     Zeidler  v.  Leech,  1891  C.  D.  9. 

395.  The  time  limited  for  the  making  of  motions  runs 
from  the  day  the  original  statements  are  received  and 
approved,  and  a  subsequent  amendment  of  a  preliminary 
statement  does  not  of  itself  operate  to  extend  this  time. 

Scribner  &  Warner  v.  Childs  v.  Balslev,   1892 
C.  D.  104. 

396.  Upon  a  motion  to  dissolve  an  interference  upon 
the  ground  of  irregularity  in  declaring  the  same  the 
Primary  Examiner  is  not  at  liberty  to  decide  the  question 
of  patentabilitv. 

Hutt  &  Phillips  V.  Foglesong,  1892  C.  D.  190. 

397.  On  hearing  nothing  should  be  considered  by  the 
Primary  Examiner  outside  of  the  fact  disclosed  by  the 
record  unless  a  showing  of  such  additional  facts  accom- 
panies the  motion  to  transmit,  but  that  where  moving 


98  INTERLOCUTORY  MOTIONS  133 

jjarties  rely  ui)ou  the  record  it  is  unneeessary  for  them 
to  state  in  the  motion  the  facts  upon  which  tlie  motion 
for  dissolution  is  based. 

In  the  case  of  the  discovery  of  new  facts  after  grant- 
ing the  motion  to  transmit,  the  Primary  Examiner  may 
consider  such    facts    provided    due    and    timely  notice 
thereof  be  given  to  the  opposite  partv. 
Wells  v.  Packer,  90  0.  G.  1947. 

398.  When  motions  to  dissolve  are  brought  upon  the 
grounds  specified  in  Rule  122,  the  Examiner  should  decide 
the  motion  on  all  grounds,  and  if  this  decision  is  of  such 
a  nature  that  appeals  therefrom  may  be  taken  he  should 
fix  a  limit  of  appeal. 

Hingley  v.  Parker,  97  0.  G.  2742. 

399.  The  Examiner  should  decide  the  motion  upon  all 
the  grounds  presented. 

Oldham  &  Padbury  v.  P.  v.  C.  v.  R.,  99  0.  G.  670. 

400.  If  the  Examiner  is  of  the  opinion  that  part  of 
the  claims  are  unpatentable  he  should  dissolve  the  inter- 
ference as  to  these  claims  and  continue  it  as  to  the  re- 
mainder. If  the  remaining  claims  are  sufficient  to  base 
a  conclusive  decision  upon,  the  interference  should  not 
be  dissolved  to  present  new  claims  in  place  of  those  held 
unpatentable.  A  motion  to  amend  may  be  granted  con- 
ditioned on  the  filing  of  an  affidavit  under  Eule  75. 

Hillard  v.  Eckert,  101  (3.  G.  1831. 

401.  When  a  motion  is  made  on  all  the  grounds  speci- 
fied in  Eule  122,  it  is  the  duty  of  the  Examiner  to  con- 
sider and  determine  all  these  grounds  and  assign  limits 
of  ajipeal  to  all  that  are  appealable. 

Cutler  V.  Eiddell,  100  0.  G.  763. 
See  also  Hopfelt  v.  Eead,  106  0.  G.  767  and  cases 
cited. 

402.  Where  time  is  limited  in  which  to  take  action 
after  the  rendering  of  a  decision,  the  date  of  the  decision 
and  not  the  date  of  the  receipt  of  notice  thereof  governs. 

Greuter  v.  Mathieu,  112  ().  G.  254. 

403.  If  there  is  a  broad  invention  common  to  the 
respective  inventions,  it  would  seem  that  this  fact  could 
be  determined  by  the  respective  parties  and  the  claims 
included  in  the  issue,  so  that  this  interference  can  pro- 


122  INTERLOCUTORY  MOTIONS  99 

ceed  on  its  merits  without  fiii'ther  delay,  of  which  there 
has  been  too  much  in  this  case. 

Noi-niaiid  v.  Krimmelbein,  115  0.  G.  249. 

•  ..... 

404.  The  time  limit    fixed    in    the    rules  for   motions 

means  actual  time,  and  Sundays  and  liolidays  are  not  ex- 
cluded in  computing  it. 

Dickinson  v.  Norris,  IIG  ().  G.  593. 

405.  Where  an  interference  is  transmitted  to  the 
Primary  Examiner  for  the  purpose  of  determining  the 
right  of  one  of  the  parties  to  make  the  claim,  and  the 
Examiner  also  decides  the  (juestion  of  interference  in 
facts — HELD  that  the  Examiner  exceeds  his  jurisdiction. 

Podlesak  &  Podlesak  v.  Mclnnernev,  118  0.  G. 
'      835. 
See  next  case  also,  118  0.  G.  836. 

406.  The  time  limited  for  appeal  begins  to  run  when 
the  case  is  returned  to  the  Examiner  of  Interferencs  and 
formal  resumption  of  proceedings  is  noted. 

Hewitt  V.  Steinmetz,  122  0.  G.  1396. 

407.  Where  the  questions  involved  are  patentability 
and  the  right  of  party  to  make  claim,  the  motion  should 
not  be  granted  on  the  ground  of  non-interference  in  fact. 

Thullen  v.  Young  &  Townsend,  118  0.  G.  2251. 

409.  Successive  motions  discouraged. 

Scott  V.  Emmet  &  Hewlett,  119  0.  G.  2233. 

410.  Prior  ex  parte  decision  by  appellate  tribunal  not 
binding  on  Primary  Examiner  in  inter  partes  considera- 
tion.    Pelsing  V.  Nelson,  120  0.  G.  2445. 

411.  The  Examiner  may  upon  a  motion  for  dissolution 
of  an  interference  where  a  party  has  filed  a  certified  copy, 
determine  whether  or  not  it  is  necessary  for  the  other 
party  to  see  other  parts  or  the  whole  of  the  original 
application.     Pagan  v.  Graybill,  121  0.  G.  1013. 

412.  It  is  well  settled  that  where  an  interference  is 
transmited  to  the  Primary  Examiner  for  the  considera- 
tion of  one  question,  he  is  without  jurisdiction  to  con- 
sider an  entirely  independent  question. 

Moore  v.  Curtis,  121  O.  G.  2325. 

413.  Where  the  Examiner  finds  on  motion  to  dissolve 
an  interference  that  the  subject  matter  in  issue  is  not 
patentable,  he  should  take  sucli  action  in  the  applications 


100  INTERLOCUTORY  MOTIONS  122 

subsequent  to  his  decisions  as  will  put  them  in  condition 
for  statutory  appeal,  so  that  the  appeal  may  be  continued 
directly  to  the  Court  of  Appeals  without  the  necessity  of 
a  second  course  of  appeal  through  the  Patent  ( )ffice. 
Newcomb  v.  Thomson,  122  0.  G.  8013. 

414.  No  good  reason  appears  for  holding  that  a 
tribunal  may  not  properly  render  a  decision  on  a  motion 
for  a  rehearing  made  within  the  time  limited  for  an 
appeal  but  noti/:!ed  bevond  such  limit. 

Naulty  V.  Cutler,  126  0.  G.  389. 

415.  If  a  motion  is  made  before  the  expiration  of  the 
30  days,  the  balance  of  the  time  is  waived. 

Rockstroh  v.  Warnick,  132  0.  G.  234. 

416.  No  limit  of  appeal  should  be  set  on  a  decision 
refusing  to  expunge  testimony. 

Green,    Tweed   &   Co.   v.   Manufacturers'   Belt 
Hook  Co.,  132  0.  G.  680. 

417.  Where  an  Examiner  rejects  claims  presented  by 
a  party  for  interference  under  Rule  109,  he  should  set  a 
limit  of  appeal  from  his  decision  whether  the  claims  had 
been  allowed  to  the  other  party  or  had  been  made  for  the 
first  time  bv  the  moving  partv. 

Mattice  v.  Langworthy,  132  0.  G.  1073. 

GROUNDS  OF  APPEAL. 

418.  When  it  appears  upon  the  face  of  the  paper  that 
the  real  grounds  of  a  motion  to  dissolve  relates  to  the 
merits,  the  Commissioner  will  not  take  jurisdiction  either 
by  appeal  or  petition. 

Manny  v.  Easlev  v.  Greenwood,  Jr.,  48  0.  G.  538, 
86  0.  G.  490-491,  98  0.  G.  415,  97  0.  G.  1172, 
110  0.  G.  6036,  107  O.  G.  1098,  88  O.  G.  2409, 
96  0.  G.  844,  86  0.  G.  1636,  89  0.  G.  1862,  78 
0.  G.  1904. 

419.  It  thus  appears  that  the  Court  of  Appeals  will 
not  entertain  an  appeal  from  a  decision  on  a  motion  to 
dissolve  an  interference,  even  where  the  decision  is  ad- 
verse to  the  right  of  a  party  to  make  the  claim.  This 
latter  question  may  be  settled  ex  parte  in  the  usual  way 
after  the  interference. 

The  whole  proceeding  relating  to  motion  for  dissolu- 


132  INTERLOCUTORY  MOTIONS  101 

tion  is  one  of  office  procedure  provided  for  by  the  au- 
thority of  R.  S.  Sec.  483,  Newcomb  v.  Lemp,  112  0.  G. 
1216.    But  see  U.  S.  ex  rel.  The  Newcomb  Motor  Co.  v. 
Moore  Com.,  133  0.  G.  1680. 

420.  Examiner  required  to  set  a  limit  for  appeal  upon 
the  question  of  irregularity  and  interference  in  fact.  If 
these  grounds  are  mere  pretenses  to  get  the  question  not 
appealable  under  Rule  124  reviewed  the  appeal  will  be 
dismissed.     Duryea  &  White  v.  Rice,  115  0.  G.  803. 

421.  It  having  been  finally  determined  that  Struble 
has  no  right  to  make  claims  corresponding  to  the  counts 
of  the  issue,  the  question  raised  by  the  appeal,  namely, 
the  question  of  interference  in  fact,  becomes  moot  and 
will  not,  therefore,  be  decided. 

Coleman  v.  Struble,  114  0.  G.  973. 

422.  All  the  reasons  given  where  alleged  but  the 
case  was  not  appealed  solely  upon  the  ground  of  non- 
patentability  of  his  opponent's  claim.  The  Examiner 
properly  set  a  limit  of  appeal,  as  he  is  not  the  judge  of 
the  propriety  of  the  appeal. 

Harnisch  v.  Guenitfet  Benvit  &  Nicault,  117  0. 
G.  1492. 

423.  A  decision  that  a  claim  has  not  been  abandoned 
bv  failure  to  prosecute  is  appealable  under  this  rule. 

Meden  v.  Curtis,  117  0.  G.  1795. 

424.  Where  the  claims  of  the  interfering  party  are  in 
identical  language  there  is  an  interference  in  fact,  al- 
though there  may  be  specific  differencs  in  the  two  con- 
structions, such  specific  differences  not  being  specified 
in  the  claims. 

Gordon  v.  Went  worth. 

425.  It  is  not  a  question  whether  the  issue  applies  to 
both  structures  and  means  the  same  thing  in  both  cases, 
but  whether  giving  it  to  its  natural  and  ordinary  mean- 
ing the  issue  is  patentable.  The  Examiner's  decision  on 
patentability  being  favorable  the  motion  to  dismiss  this 
appeal  is  granted. 

White  V.  Thomson,  101  0.  G.  1371  and  2825. 

426.  On  appeal  matters  not  urged  before  the  Ex- 
aminer will  not  be  considered. 

Pfingst  V.  Anderson,  118  0.  G.  1067. 


102  INTERLOCUTORY  MOTIONS  122 

427.  In  trade-mark  cases  on  an  appeal  as  to  priority, 
identity  of  subject-matter  will  not  be  considered. 

"  Home  V.  Somers  &  Co.,  129  O.  G.  1609. 

428.  ^^Iietber  or  not  the  application  discloses  the  sub- 
ject-matter of  the  interference,  and,  therefore,  whether 
or  not  the  interference  is  properly  declared,  is  a  question 
ordinarily  to  be  determined  by  the  Patent  Office.  (See 
Ostergen  v.  Tripler,  17  App.  D.  C.  558;  Herman  v.  Full- 
man,  23  App.  D.  C.  264-265.)  However,  this  Court  has  held 
that  in  extreme  cases  where  palpable  error  has  been  com- 
mitted, the  decision  of  the  Patent  Office  holding  identity 
of  invention  between  the  devices  of  the  parties  to  the 
interference  may  be  reversed.  (See  Podlesak  &  Pod- 
lesak  V.  Mclnnernev,  26  App.  D.  C.  399.) 

McMulken  v.  Bollee,  130  0.  G.  1691. 

SHIFTING  BURDEN  OF  PROOF. 

429.  Burden  of  proof  when  originality  denied. 
Wherry  v.  Heck,  49  O.  G.  559. 

430.  It  is  not  enough  for  the  applicant  to  charge 
fraud,  which  is  never  presumed,  but  must  always  be 
strictly  proved,  and  then  to  demand  that  he  be  relieved 
from  the  burden  of  proof,  which  the  law  has  imposed 
upon  him.  Such  a  course  will  not  shift  the  burden  of 
proof.     Hansen  v.  Davis,  1891  C.  D.  72. 

431.  The  burden  of  proof  in  an  interference  is  upon 
the  contestant  who  fails  to  make  a  claim  to  the  improve- 
ment in  controversy  or  a  statement  equivalent  thereto 
until  the  same  was  claimed  by  the  other  party  to  the 
interference.  •  Reichenbach  v.  Goodwin,  1893  C.  D.  50. 

432.  A  formal  abandonment  of  the  earlier  application 
does  not  shift  the  burden  of  proof,  if  there  is  a  clear 
continuity  of  action  between  it  and  the  second  appli- 
cation, where  the  two  applications  are  filed  by  the  same 
applicant  and  cover  substantiallv  the  same  subject- 
matter.     Parmly  v.  Hockhausen,  1891  C.  D.  180. 

433.  The  presumption  is  that  the  Office  did  its  duty 
in  notifying  the  caveators  of  the  filing  of  the  interfering 
application,  and  the  bur^den  is  upon  them  to  establish 
their  allegation  of  no  notice  by  adequate  proof. 

Killeher  &  Grimm  v.  Mayliew,  72  0.  G.  895. 


133  INTERLOCUTORY  MOTIONS  103 

434.  A  resissue  has  the  same  standing  as  to  linrdeni 
of  ])roof  as  the  original  patent. 

Hansen  v.  Davis,  1891  C.  ]).  72. 

435.  Motion  to  shift  need  not  set  up  facts  unless  tliey 
are  outside  the  i-ecord. 

81iei)i)ard  v.  AVebb,  94  O.  G.  1577.     ^'•^'^' 

436.  A  motion  to  shift  the  burden  of  proof  may  be 
founded  upon  matters  outside  of  the  record. 

Bundy  v.  Rumbarger,  92  O.  G.  2001-2. 

437.  If  one  wishes  to  estal)lish  the  date  of  filing  of  an 
earlier  application  he  should  do  so  by  a  motion  to  shift 
the  burden  of  proof,  in  which  case  the  decision  of  the 
Primary  Examiner  as  to  the  admission  of  claims  will  be 
final.  If  such  earlier  a])plication  is  brought  in  the  course 
of  taking  the  testimony  it  will  be  considered  like  other 
testimonv  bv  all  the  tribunals  having  jurisdiction. 

Robinson  v.  Copeland,  102  0.  G.  466. 

438.  A  motion  to  shift  the  burden  of  i)roof  because  the 
invention  in  issue  was  introduced  by  amendment  is  im- 
proper. The  remedv  is  bv  motion  to  dissolve  under  rule 
122.       Tripp  v.  Woiff  v.  Jones,  103  0.  G.  2171. 

439.  When  an  error  is  discovered  by  the  Examiner 
of  Interferences  which  would  amount  to  such  an  ir- 
regularity as  would  preclude  proper  determination  of 
the  question  of  priority,  such  as  the  improper  placing 
of  the  burden  of  ]:)roof,  the  interference  should  be  for- 
warded to  the  Primary  Examiner  with  a  statement  of 
facts,  that  he  may  correct  his  letter  forwarded  to  the 
Examiner  of  Interferences  under  Rule  97. 

Lutz  V.  Lewis,  110  0.  G.  2014.     (Sup.) 

440.  F's  patent  does  not  make  him  the  senior  party 
in  the  proceeding;  as  D.  was  the  first  to  file  an  appli- 
cation, he  is  the  senior  party  in  this  proceeding,  and  it  is 
incuinbent  ujwn  F.  in  order  to  prevail  to  establish  his 
case  bv  a  ])reponderance  of  evidence. 

Furman  v.  Dean,  111  O.  G.  1366. 

441.  The  i)endency  of  a  motion  for  dissolution  is  no 
good  reason  for  delav  in  bringing  a  motion  to  shift  the 
burden  of  proof  (See  McArthur  v.  Gilbert,  111  O.  G. 
1624.)     Harvey  v.  Lubbers  v.  Kasi)inaire,  112  ().  G.  1215. 


104  INTERLOCUTORY  MOTIONS  122 

442.  Motions  to  shift  the  burden  of  proof  are  brought 
under  the  provisions  of  Rule  116.  In  a  proper  case  the 
burden  of  proof  can  be  shifted  without  dissolving  and 
redeclaring  the  interference. 

443.  Said  by  Commissioner  on  Appeal — Before  the 
interference  proceeds  further  it  should  be  positively  de- 
termined whether  or  not  these  new  reference  anticipate 
the  issue.     Wright  &  Stebbens  v.  Hansen,  114  0.  G.  761. 

444.  An  ex  parte  affidavit  is  not  sufficient  to  change 
the  burden  of  proof  by  carrying  back  a  party  tiling  date 
to  that  of  a  foreign  application. 

Eaulet  &  Nicholson  v.  Adams,  114  0.  G.  1827. 

445.  Motions  to  shift  the  burden  of  proof  should  be 
made  before  the  Examiner  of  Interferences  within  the 
twenty  days  after  the  approval  of  the  preliminary  state- 
ment allowed  for  motions.  This  case  withdraws  juris- 
diction from  the  Primarv  Examiner  in  this  class  of  cases. 

Raulet  &  Nicholson  v.  Adams,  114  0.  G.  1827. 

446.  A  previous  application  which  does  not  show 
all  the  elements  of  the  issue  cannot  avail  to  shift  the 
burden  of  proof. 

Norden  v.  Spaulding,  114  0.  G.  1828. 

-t47.  As  held  in  the  case  of  Raulet  &  Nicholson  v. 
Adams  (114  0.  G.  1827)  no  appeal  will  be  entertained 
upon  interlocutory  motion  relating  to  the  burden  of 
proof,  but  that  matter  may  be  brought  up  with  the  final 
decision  as  to  priority  of  invention.  Such  motions  should 
be  made  before  the  Examiner  of  Interferences. 
Osborne  v.  Armstrong,  114  0.  G.  2091. 

448.  Claimed  that  the  invention  was  not  .shown  in 
original  application  but  was  introduced  by  amendment 
subsequent  to  the  filing  of  opponent's  application. 

If  well  founded  this  would  entitle  S.,  who  was  the  first 
to  conceive,  to  the  benefit,  also,  of  the  earlier  reduction  to 
practice,  and  an  inquir}'  into  the  question  of  diligence 
would  be  unneeessarv. 

Seeberzer  v.Dodge,  114  0.  G.  2382. 

449.  As  a  general  rule  the  burden  of  proof  rests  on 
the  party  against  whom  judgment  would  be  rendered  if 
no  evidence  were  adduced  on  either  side.  This  question 
involving  the  taking  of  testimony,  should  be  considered 


J^33  INTERLOCUTORY  MOTIONS  105 

by  the  Examiner  of  Interferences,  and  there  is  no  appeal 
from  his  decision  prior  to  the  final  appeal. 

Fennell  v.  Brown  v.  Borsch,  115  0.  G.  1328. 

450.  Where  an  appeal  was  taken  from  the  action  of 
the  Primary  Examiner  denying  motion  to  shift  burden 
of  proof,  the  appeal  not  considered  and  case  remanded 
to  Examiner  of  Interferences.  Head  note  to  Fisher  v. 
Daigherly,  118  0.  G.  1681.  Opinion  does  not  seem  to 
bear  out  head  note. 

451.  The  alleged  improper  placing  of  the  burden  of 
proof  forms  no  proper  basis  for  motion  for  dissolution, 
and  that  question  should  be  presented  by  separate 
motion  to  shift  the  burden  of  proof. 

Blackmore  v.  Hall,  118  0.  G.  2538. 

452.  The  question  of  shifting  the  burden  of  proof  is 
a  matter  within  the  jurisdiction  of  the  Examiner  of  In- 
terferences and  not  the  Primary  Examiner,  and  there 
is  no  appeal  from  this  decision  prior  to  final  judgment. 

Eaulet  &  Nicholson  v.  Adams,  114  0.  G.  1827. 
Scott  V.  Southgate,  121  0.  G.  689. 

/ 
MISCELLANEOUS. 

Allen,  Com.,  etc.,  v.  U.  S.  ex  rel.  Lowrv  et  al.,  116 
O.  G.  2253. 

Eschinger  v.  Drummond  &  Lieberknecht,  121  0.  G. 
1348.    See  note  to  Eule  124. 

Ingoldslv  V.  Bellows.  116  0.  G.  2532.  See  note  to  Kule 
128. 

Wallace,  118  0.  G.  1686.    See  note  to  Rule  145. 

Cazen  v.  Von  Welsbach,  119  0.  G.  650.  See  note  to 
Rule  153. 

Sobev  V.  Holsclaw,  119  O.  G.  1922. 

Park  Y.  Lewis,  120  O.  G.  323.    See  note  to  Rule  124. 

Felsing  y.  Xelson,  121  0.  G.  1347.    See  note  to  Rule  124. 

Garnall  y.  Pope,  115  0.  G.  2136.    vSee  note  to  Rule  126. 

Miller,  116  O.  G.  2532.    See  note  to  Rule  66. 

Hicks  Y.  Costello,  103  0.  G.  1163. 

SibleY  Soap  Co.  v.  Lambert  Pharmacal  Co.,  103  0.  G. 
2172. 

Dickinson  y.  Tliibodeau  y.  Hildreth,  99  0.  G.  2550. 
See  Rule  76. 

Fessenden  y.  Potter,  101  0.  G.  2823. 


106  INTERLOCUTORY  MOTIONS  ^22 

Votev  V.  Weist,  Jr.,  v.  Donovan,  111  0.  G.  1627. 

Macev  v.  Tobev  v.  Laning,  97  0.  G.  1172. 

Potter  V.  Van  Vleck  v.  Thomson,  95  0.  G.  2-t84. 

Valiquet  v.  Johnson,  92  0.  G.  1795. 

Banks  v.  Snediker,  17  0.  G.  508. 

Carroll  v.  Stahlberg,  111  0.  G.  1937. 

Fickinger  &:  Blake  v.  Hulett,  111  0.  G.  2492. 

Wilkinson  v.  Junggren,  112  O.  G.  252. 

In  re  Lowry,  90  0.  G.  445.    See  note  1,  Kule  15. 

Philadelphia  AVatcli  Case  Company. 

The  Dueber  Watch  Case  Manufacturing  Co. 

The  Keystone  Watch  Case  Com])any  y.  Byron  L.  Stras- 
burger  &  Company,  122  0.  G.  1725.    See  note  to  Rule  76. 

Kugele  y.  Blair,  127  0.  G.  1253. 

Hewitt  y.  Weintraub  y.  Hewitt  y.  Rogers,  128  0.  G. 
1689.    See  note  under  Rule  130. 

U.  S.  A.  ex  rel.  The  Xewcomb  Motor  Co.  y.  Allen 
(Moore)      Commissioner. 

See  note  to  124-130,  0.  G.  302. 


123  INTERLOCUTORY  MOTIONS  107 

RULE  123. 

123.  All  lawful  motions,  except  those  mentioned  in 
Rule  122,  will  be  made  before  and  determined  by  tlie 
tribunal  liaving  jurisdiction  at  the  time.  The  filing  of 
motions  will  not  operate  as  a  stay  of  proceedings  in  any 
case.  To  effect  this,  motion  should  be  made  before  the 
tribunal  having  jurisdiction  of  the  interference,  who  will, 
sufficient  grounds  appearing  therefor,  order  a  suspension 
of  the  interference  pending  the  determination  of  such 
motion. 


STAY  OF  PROCEEDINGS. 

453.  A  motion  to  operate  as  a  stay  of  proceedings 
should  be  accompanied  by  a  petition  to  that  effect.  An 
order  should  then  be  entered  at  or  before  the  hearing 
of  said  motion  granting  or  refusing  the  petition. 

Dubois  V.  McCloskey,  17  0.  G.  1158. 

454.  A  motion  for  a  rehearing — even  if  filed  within  the 
limit  would  not  operate  as  a  stav. 

Oarmichael  v.  Fox,  104  0.  G.  1656. 

455.  When  Alexander's  motion  to  re-open  was  filed 
on  March  11,  only  three  days  remained  to  him  for  the 
time  limited  for  appeal.  The  suspension  of  proceedings 
at  that  time  did  not  have  the  effect  of  setting  aside  and 
nullifying  the  order  fixing  30  days  as  the  limit  of  appeal, 
but  merely  stopped  the  running  of  the  time  until  the 
question  raised  could  be  finally  disposed  of.  As  soon  as 
that  question  was  disposed  of  by  the  decision  of  May  13, 
the  time  for  appeal  again  began  to  run. 

A  limit  of  appeal  will  not  usuallv  be  extended. 
Blackman  v.  Alexander,  105  0.  G.  2059. 

456.  There  is  no  necessity  for  a  suspension  of  proceed- 
ings, as  there  is  now  no  limit  of  appeal  running  against 
any  of  the  parties. 

Robinson  v.  Townsend  v.  Copeland,  106  0.  G. 
997. 

457.  A  petition  under  Rule  145  is  not  good  ground  for 
asking  a  suspension  of  the  interference. 

■Churchward  v.  Douglas  v.  Cutler,  106  0.  G.  2016- 
17. 


108  INTERLOCUTORY  MOTIONS  1»J3 

458.  It  is  deemed  better  in  tlie  interest  of  uniform 
practice  to  require  that  motions  be  filed  as  provided  in 
Eules  122  and  123  should  a  suspension  of  proceedings 
be  desired  pending  the  determination  of  any  lawful, 
motion.     Hoegh  v.  Gordon,  108  0.  G.  797. 

459.  It  is  no  ground  for  the  suspension  of  an  inter- 
ference that  an  infringement  suit  is  pending. 

McBride  v.  Kemp,  109  0.  G.  1070. 

Kletzker  &  Goesel  v.  Dodson,  109  0.  G.  1336. 

460.  If  it  is  difficult  to  obtain  testimony  and  a  party 
elects  to  take  his  chances  without  it,  he  cannot  have  the 
case  reopened  to  introduce  such  evidence. 

Grenter  v.  Matthew,  111  0.  G.  583. 

461.  When  a  suspension  has  been  granted  the  time 
commences  to  run  immediately  on  the  expiration  of  the 
time  of  suspension,  or  upon  the  determination  of  the 
motion.     Grenter  v.  Matthew,  112  0.  G.  253. 

462.  A  motion  for  rehearing  does  not  operate  as  a 
stay  of  the  running  of  the  time  in  which  an  appeal  from 
that  decision  should  be  taken. 

Cole  V.  Zarbock  v.  Greene,  116  0.  G.  1451. 

463.  Cases  in  the  Office  will  not  be  suspended  to  await 
the  final  decision  of  the  Courts  upon  another  case  where 
similar  questions  are  raised. 

Potter  V.  Mcintosh,  116  0.  G.  1451. 

464.  A  stay  will  not  be  granted  to  await  the  deter- 
mination in  an  ex  parte  consideration  of  an  application 
not  involved  in  the  interference. 

Mark  V.  Greenwalt,  118  0.  G.  1068. 

465.  The  pendency  of  one  motion  is  no  excuse  for  the 
failure  to  bring  other  motions,  and  a  suspension  of  pro- 
ceedings as  to  one  motion  does  not  extend  the  period  of 
time  for  bringing  other  motions.  (Cases  cited.) 

Moore  v.  Curtis,  121  O.  G.  2325. 
Naully  V.  Cutler,  126  0.  G.  389. 

JURISDICTION. 

466.  It  is  a  matter  wholly  within  the  discretion  of 
the  Commissioner  wliat  questions  or  whether  all  ques- 
tions arising  out  of  interference  cases  shall  be  decided 


±2ii  INTERLOCUTORY  MOTIONS  109 

in  the  first  instance,  by  the  Examiner  of  Interferences 
or  some  other  Primary  Examiner. 

Weitling  v.  Cabell,  72  C.  D.  185. 

See  also  22  0.  G.  22-33. 

467.  To  what  tribunal  they  (questions  arising  in  an 
interference  proceeding)  may  be  appealed  may  be  deter- 
mined altogether  by  the  nature  of  the  questions  them- 
selves, and  the  law  relating  to  them. 

Weitling  et  al.  v.  Cabell,  1872  C.  D.  187,  185. 

468.  Questions  of  patentable  combinations  remanded 
to  the  Primary  Examiner  for  consideration. 

Lynch  &  Raff  v.   Dryden   &  Underwood,   1873 
C.  D.  73. 

470.  If  in  the  judgment  of  the  Examiner  of  Interfer- 
ences neither  party  is  entitled  to  a  patent  for  want  of 
novelty,  he  must  send  the  question  back  to  the  Primary 
Examiner  for  determination.  He  cannot  decide  it  him- 
self.   Neuboeker  v.  Schafhaus,  1873  C.  D.  138. 

471.  The  practice  indicated  by  this  Rule  approved  by 
Mc Arthur  J.,  but  Judge  Wylie  said  ''I  have  no  idea  that 
it  was  the  intention  of  the  law  makers  that  in  questions 
of  interference  the  Office  should  go  into  the  question  of 
abandonment,  and  he  did  not  think  the  Commissioner  had 
a  right  to  establish  a  rule  permitting  it." 

Bigelow  V.  The  Commissioner  of  Pats.,  7  0.  G. 
606. 

472.  The  Examiner  of  Interferences  is  the  tribunal  be- 
fore whom  an  interference  is  originally  to  be  heard.  It 
is  irregular  to  present  the  question  to  the  Board  of  Ex- 
aminers in  the  first  instance. 

Farnsworth  v.  Andrews,  9  0.  G.  195. 

473.  The  question  of  two  years'  public  use  as  a  statu- 
tory bar  receives  consideration  from  the  Examiner  of 
Interferences.  He  overlooks  in  this  connection,  the  ques- 
tion of  sale.  This  appears  to  be  a  very  important  point. 
This  case  was  remanded  by  the  acting  Commissioner  to 
the  Primary  Examiner  to  consider  the  question  of  sale 
more  than  two  years  before  application. 

Keller  &  Olmesdahl  v.  Felder,  10  0.  G.  944. 

474.  The  Examiner  of  Interferences  has  no  jurisdic- 
tion over  questions  of  patentability.  Such  questions 
should  go  to  the  Primary  Examiner  as  they  are  appeal- 


110  INTERLOCUTORY  MOTIONS  J  23 

able  to  the  Supreme  (V)urt  of  the  District,  and  matters 
within  tlie  jurisdiction  of  the  Examiner  of  Interferences 
cannot  be  appealed  from  the  Decision  of  the  Commis- 
sioner.   Little  V.  Little  et  ah,  10  0.  G.  543. 

47.").  Facts  establishing  two  years'  public  use  before 
application  for  a  ])atent  developed  in  an  interference 
cannot  afterward  be  explained  away  by  (\r  parte  affi- 
davits. Case  remanded  to  the  Primary  Examiner  to  con- 
sider such  question. 

Stearns  v.  Prescott,  13  0.  G.  121. 

47().  ((Questions  of  statutory  bar  of  jniblic  use  referred 
to  the  Primary  Examiner  by  the  Conunissioner  without 
an  appeal  from  the  decision  of  the  Examiner  of  Inter- 
ferences.    Quiinby  v.  Randall,  14  0.  G.  748. 

477.  The  Examiner  of  Interferences  has  no  jurisdic- 
tion over  of  two  vears  public  use  as  a  bar  to  a  patent. 

Little  V.  Little  et  al.,  76  C.  D.  207. 
Ansen  v.  Woodbury,  77  C.  D.  4. 

478.  The  Examiner  of  Interferences  cannot  dissolve 
an  interference  in  view  of  c.v  parte  affidavits  setting  forth 
public  use  as  a  bar  to  the  application.  The  question 
should  be  remanded  to  the  Primarv  Examiner. 

Hedges  v.  Daniels,  17  0.  G.  152. 

479.  After  the  declaration  of  an  interference  a  motion 
to  dissolve  should  be  made  to  the  Examiner  of  Interfer- 
ences.    Barney  v.  Kellogg,  17  0.  G.  1096. 

480.  The  Examiner  of  Interferences  has  jurisdiction 
to  hear  and  determine  the  fact  of  joint  or  sole  invention 
in  an  interference  between  joint  patentees  and  a  sole  ap- 
l)licant  w'ho  is  one  of  said  patentees. 

Lourien  v.  Banister,  18  0.  G.  299. 
E.v  parte  Bruker,  M.  S. 

481.  If  it  is  decided  that  there  was  no  joint  invention 
the  sole  applicant  would  be  the  prior  inventor,  as  the 
entitv,  the  joint  inventors,  never  invented  it  at  all. 

Kohler  v.  Kohler  &  Chambers,  43  0.  G.  247. 
See  Harrison  v.  Hogan,  18  0.  G.  921. 

482.  Judgment  of  priority  given  by  the  Commissioner 
and  the  case  remanded  to  the  Primary  Examiner  to  de- 
termine the  question  of  a  statutory  bar  by  reason  of, 
l)ublic  use.    Smith  v.  Dimond,  20  0.  G.  742. 


133  INTERLOCUTORY  MOTIONS  111 

483.  The  Examiner  of  Interferences  is  a  j)roper  person 
to  hear  and  determine  questions  relative  to  abandonment. 

Von  Heffner  v.  Alteneck,  23  0.  G.  2233. 

484.  The  practice  indicated  by  this  rule  (126?)  seems 
to  be  that  such  reference  by  the  Commissioner  can  only 
be  made  when  the  case  is  brought  to  him  regularly  on  a]> 
peal.  In  a  case  where  the  testimony  conclusively  estab- 
lishes the  fact  that  the  invention  had  been  in  public  use 
for  more  than  two  years  prior  to  the  time  when  the 
api^lication  for  a  patent  was  filed,  I  do  not  know  that  it 
would  be  a  violation  of  the  Rule  for  the  Commissioner  to 
order  that  the  question  should  be  determined  before  any 
decision  of  prioritv  is  made.  But  as  above  stated  such 
is  not  the  practiceSinder  said  Rule.  Such  reference  will 
not  be  made  if  the  testimony  relating  to  public  use  is  not 
conclusive.     Finch  v.  Bailey  «&  Talbot,  25  0.  G.  191. 

485.  Motion  for  the  dissolution  of  the  interference 
on  the  ground  that  it  was  declared  in  violation  of  the 
provisions  of  Rules  121  and  123  should  be  determined 
bv  the  Examiner  of  Interferences. 

Edison  &  Gilliland  v.  Phelps,  38  0.  G.  539. 

486.  Motion  to  re-ojoen  for  the  purpose  of  taking  more 
testimonv  comes  properlv  before  the  Examiner  of  Inter- 
ferences."   McCallum  v.  Bremer,  93  0.  G.  1918. 

Hildreth,  97  0.  G.  1374. 

487.  The  restoration  of  jurisdiction  for  one  purpose 
does  not  restore  it  for  all. 

Benger  v.  Burson,  99  0.  G.  1384. 

488.  After  appeal  it  was  refused  to  restore  jurisdic- 
tion to  the  Examiner  of  Interferences  in  order  to  present 
a  motion  to  dissolve. 

Fessenden  v.  Potter,  101  0.  G.  2823. 

489.  The  fact  that  a  similar  question  has  been  raised 
by  another  party  furnishes  no  ground  for  a  rehearing. 

Davis  V.  Ocumpaugh  v.  Gerrett,  103  0.  G.  227. 

490.  Motions  to  shift  the  burden  of  proof  should  be 
made  before  the  Examiner' of  Interferences  within  the 
20  days  after  the  approval  of  the  preliminary  statements 
allowed  for  motions.  (Changing  jurisdiction  from  Pri- 
mary Examiner  to  Examiner  of  Interferences.) 

Raulet  &  Xicholson  v.  Adams,  114  O.  G.  1827. 


112  INTERLOCUTORY  MOTIONS  ±2S 

491.  Jurisdiction  restored  to  the  Examiner  of  Inter- 
ferences after  time  limited  for  appeal  had  expired. 

The  party  should  have  a  hearing-  upon  the  question 
whether  the  showing  made  by  him  is  sufficient  to  warrant 
the  reopening  of  the  case. 

Lipscomb  v.  Pfeiffer,  122  0.  G.  351. 

492.  The  only  apparent  questions  for  consideration 
on  a  motion  to  restore  jurisdiction  to  the  Examiner  of 
Interferences  are  whether  the  motion  is  in  projDer  form 
and  whether  so  far  as  can  be  seen,  without  going  into  the 
merits  of  that  motion,  it  is  brought  in  good  faith. 

Newell  V.  Clitford  v.  Rose,  122  0.  G.  730. 

493.  It  is  urged  that  the  earlier  api3lication  does 
not  disclose  the  invention,  and  it  is  very  clear  that  this 
is  a  matter  which  is  to  be  considered  and  determined  by 
the  Examiner  of  Interferences  and  not  the  Primarv  Ex- 
aminer.    Dickinson  v.  Hildreth,  122  0.  G.  1397. 

494.  Jurisdiction  of  Examiner  of  Interferences. 
Lowry  &  Cowley  v.  Spoon,  122  0.  G.  2687. 
Behrend  v.  Lammer  v.  Tinglev,  124  0.  G.  2536. 
Kugele  V.  Blair,  125  0.  G.  1350. 


124  INTERLOCUTORY  MOTIONS  113 

RULE  124. 

124.  Where,  on  motion  for  dissolution,  the  Primary 
Examiner  renders  an  adverse  decision  upon  the  merits  of 
a  party's  case,  as  when  he  holds  that  the  issue  is  not 
patentable  or  that  a  i)arty  has  no  right  to  make  a  claim 
or  that  the  counts  of  the  issue  have  different  meanings 
in  the  cases  of  different  parties,  he  shall  fix  a  limit  of  ap- 
peal not  less  than  twenty  days  from  the  date  of  his  dec- 
ision. Appeal  lies  to  the  Examiners-in-Chief  in  the  first 
instance  and  will  be  heard  inter  partes.  If  the  appeal  is 
not  taken  within  the  time  fixed,  it  will  not  be  entertained 
except  by  permission  of  the  Commissioner. 

No  appeal  will  be  permitted  from  a  decision  rendered 
upon  motion  for  dissolution  affirming  the  patentability 
of  a  claim  or  the  applicant's  right  to  make  the  same  or 
the  identity  of  meaning  of  counts  in  the  cases  of  different 
parties. 

Appeals  may  be  taken  directly  to  the  (*onnuissioner,  ex- 
cept in  the  cases  provided  for  in  the  preceding  ])ortions 
of  this  rule,  from  decisions  on  such  motions  as,  in  his 
judgment,  should  be  appealable. 


HISTORY  AND  SUBJECT  MATTER. 

495.  This  rule  is  not  inconsistent  with  section  4909  of 
the  Revised  Statutes. 

Lowrv  V.  Spoon,  112  0.  G.  732.     (See  133  0.  G. 
1680). 

496.  Previous  to  1880  an  appeal  seems  to  have  been 
allowed  from  a  decision  affirming  the  patentability  of  a 
claim.  The  same  result  can  now  be  attained  by  a  protest 
under  Eule  12. 

Fowler  v.  Benton,  17  0.  G.  266. 

497.  Propriety  of  rule  discussed.  (Consolidating  In- 
terferences. ) 

Klein  v.  Groebli,  110  0.  G.  305-308. 

498.  The  practice  indicated  by  Rules  122-123-125  may 
not  be  the  best,  but  as  long  as  it  is  the  established  practice 
it  should  be  observed.     Brown  v.  La  Dow.  IS  ( ).  (;.  1049. 


114  INTERLOCUTORY  MOTIONS  j*i4 

499.  DGtei'iniiied  means  ended  or  decided.  This  rule 
should  control  Rules  116  and  120. 

Hicks  V.  Keating  &  Bilo'ram  v.  Purvis,  40  0.  G. 
344. 

500.  The  statutes  do  not  provide  for  an  appeal  to  the 
Exaniiners-in-Chief  from  a  decision  upon  a  motion  to 
dissolve  an  interference. 

Allen,  Commissioner,  v.  U.  S.  ex  rel.  Lowrv  et  al., 
116  0.  G.  2258. 

501.  The  Commissioner  has,  however,  supervisory 
authoritv  over  these  matters. 

Anderson  &  Dyer  v.  Lowry,  89  0.  G.  1861. 

502.  It  is  more  than  doubtful  whether  a  construction 
of  Rule  124  which  would  deprive  the  Commissioner  of 
jurisdiction  would  be  a  valid  one. 

Von  "Welsbach  v.  Lungen,  48  0.  G.  537. 

503.  Questions  arising  under  this  rule  are  not  review- 
able by  the  SujDreme  Court  of  the  District  of  Columbia 
on  Appeal.    Hulett  v.  Long,  89  0.  G.  1141.    See  however 

U.    S.    ex   rcl.    The    Newcomb    Motor    Co.    v. 
Moore,  Com.,  133  0.  G.  1680. 

504.  I  know  of  no  confusion  in  the  practice  at  present 
existing  as  to  the  proper  course  of  appeal  upon  the  ques- 
tion of  interference  in  fact.  Rule  124  seems  clear  and 
unmistakable  upon  this  point. 

Allfree  v.  Sarver,  122  0.  G.  2391. 

506.  The  Rules  cannot  take  away  the  right  of  an  ap- 
plicant to  an  appeal  after  two  rejections  by  the  Primary 
Examiner.    See  R.  S.  Sec.  4809. 

U.  S.  ex  rel.  The  Newcomb  Motor  Co.  v.  Allen 
(Moore)  Commissioner,  130  0.  G.  302. 

507.  Appeal  denying  motion  to  dissolve  for  non-in- 
terference in  fact  is  to  the  Commissioner  and  not  to  the 
Bbard.    Zeidler  v.  Leech,  1891  C.  D.  9. 

508.  Xo  appeal  from  the  refusal  of  the  Examiner-in- 
Chief  to  direct  the  attention  of  the  Commissioner  to  cer- 
tain patents  alleged  by  one  of  the  contestants  to  consti- 
tute a  statutorv  bar. 

Schmiede  v.  Walden,  1891  C.  D.  150. 

509.  Where  a  partj-  may,  not  appeal  from  a  motion  he 
may  not  appeal  from  a  determination  upon  the  admis- 
sibility of  affidavits  filed  with  that  motion. 

Brown  v.  Inwood  et  al.,  131  0.  G.  142. 


134  INTERLOCUTORY  MOTIONS  115 

510.  The  same  reasons  for  not  permitting  an  appeal 
from  a  favorable  decision  exists  in  the  case  of  a  motion 
brought  under  Rule  109  as  on  a  motion  to  dissolve.  The 
practice  on  motions  under  Rule  109  should  follow  the 
practice  under  Rule  124. 

Townsend  v.  Copeland  v.  Robinson,   126  0.  G. 

1355. 
Josleyn  v.  Hulse,  132  0.  (i.  844. 

511.  No  appeal  from  a  decision  denying  a  motion  to 
suppress  testimony  or  requiring  a  party  to  print  ex- 
hibits.   Deitsch  Brothers  v.  Loonen,  131  0.  G.  2146. 

512.  No  appeal  from  a  decision  setting  aside  a  rec- 
ord judgment  and  fixing  a  time  for  final  hearing,  as  this 
is  not  a  final  determination  of  the  rights  of  petitioner  in 
the  premises. 

O'Brien  v.  Gale  v.  Limmer  v.  Calderwood,  133 
0.  G.  514. 

513.  A  decision  refusing  to  dissolve  an  interference 
on  the  ground  of  res  adjndicata  is  a  favorable  decision 
on  the  merits  and  was  not  to  be  reviewed  on  appeal. 

Degen  v.  Pfadt,  133  0.  G.  514. 

513a.  A  party  to  an  interference  has  no  right  to  a 
review  by  the  Commissioner  of  a  favorable  decision  by 
the  Primary  Examiner  in  a  motion  to  dissolve  alleging 
non-patentability  of  the  issue  either  on  direct  appeal  or 
upon  petition  for  the  exercise  of  his  supervisory  author- 
itv  (R.  S.  4904)  urged  to  the  contrarv. 

Hawkins  v.  Coleman  v.  Thullen,  133  0.  G.  1187. 

513b.  An  appeal  from  the  Examiner's  ruling  raises 
only  the  question  whether  or  not  the  Examiner  was  right 
in  postponing  the  consideration  of  the  question,  which  is 
a  matter  that  will  not  be  reviewed  and  reversed  except 
in  a  clear  case  of  abuse  of  discretion. 

Royce  v.  Kempshall,  119  0.  G.  338. 

513c.  The  provision  of  the  statute  giving  an  applicant 
the  right  to  have  a  claim  twice  rejected  (Sees.  4903-4909) 
does  not  apply  in  inter  partes  cases. 

Where  a  Primary  Examiner,  on  motion  to  dissolve  de- 
cides that  one  of  the  parties  has  no  right  to  make  the 
claims  of  an  interference  issue,  and  such  party  after  filing 
an  appeal  from  said  decision  fails  to  prosecute  the  same, 
and  abandons  it,  such  decision  becomes  final  and  binding 


116  INTERLOCUTORY  MOTIONS  134 

on  the  parties  aud  precludes  the  subsetiuent  cu-  parte  con- 
sideration of  the  same  question.  U.  S.  ex  rel.  The  New- 
comb  ]\rotor  Co.  V.  Moore,  Commissioner  of  Patents,  133 
0.  G.  1680. 


ABANDONMENT,  SHIFTING  THE  BURDEN  OF 
PROOF,  ETC. 

514.  Appeal  allowed  from  decision  of  Examiner  of 
Interferences  fixing  dates  for  taking  testimony  as  to 
abandonment  of  opponent's  application. 

Kinsman  v.  Strohm,  125  O.  G.  1699. 

518.  Xo  appeal  is  permitted  prior  to  final  judgment 
on  a  motion  to  shift  the  burden  of  proof,  and  any  sup- 
posed error  in  the  decision  thereon  will  be  reviewed  in 
connection  with  the  decision  upon  the  question  of  priority 
of  invention. 

McGill  V.  Adams,  119  0.  G.  1259. 

519.  A  decision  that  a  claim  is  not  abandoned  is  not 
one  that  is  not  appealable  under  the  last  paragraph  of 
this  rule,  but  is  appealable  under  Rule  122. 

Meden  v.  Curtis,  117  0.  G.  1795. 

520.  A  mandamus  refused  to  compel  the  Commis- 
sioner to  allow  an  appeal  where  the  ([uestion  of  abandon- 
ment was  decided  in  favor  of  the  applicant. 

Bigelow  V.  Commissioner  of  Patents,  7  O.  G.  603. 

524.  Refusal  to  suppress  testimony  not  reversible 
error.     Kempshall  v.  Royce,  129  O.  G.  3162. 

525.  An  appeal  should  be  allowed  where  permission 
to  take  testimonv  is  refused. 

Pym  V.  Hadaway,  128  0.  G.  457. 

526.  It  is  believed  that  it  will  be  to  the  interest  of 
all  parties  concerned,  if  the  Examiner  of  Interferences 
in  granting  motions  for  the  extension  of  time  for  taking 
testimonv  should  not  set  a  limit  of  appeal  from  such 
motion.  '  Goodfellow  v.  Jolly,  115  0.  G.  1064. 

527.  Decisions  of  the  Examiner  of  Interferences  are 
final  on  motions  to  extend  time  for  taking  testimony, 
and  no  limit  of  appeal  should  be  set. 

Christensen  v.  McKenzie,  117  0.  G.  277. 


124  INTERLOCUTORY  MOTIONS  117 

528.     Xo  appeal  from  a  decision  refusing  to  shift  the 
burden  of  proof. 

^fillei-  V.  Wallace,  131  O.  G.  1689. 


RIGHT  TO  MAKE  THE  CLAIM. 

529.  When  it  was  contended  that  one  of  the  jDarties 
did  not  interfere  because  he  did  not  show  one  element  of 
the  issue,  the  question  was  one  of  the  right  of  the  party 
to  nialve  the  claim,  and  tlie  question  was  not  appealable. 

Ball  V.  Rigo,  119  0.  G.  1258. 

530.  Res  adjudicata  is  a  (luestion  of  right  to  make  the 
claim  and  will  not  be  considered  on  petition  from  a  fav- 
orable decision. 

Eschinger   v.    Drummond    &'  Lieberknecht,    121 
0.  G.  1348. 

531.  There  is  no  appeal  from  a  judgment  of  priority 
rendered  in  view  of  the  admission  of  a  party  that  he  is 
not  the  inventor,  and  no  limit  of  appeal  need  be  set  from 
such  a  decision. 

Townsend  v.  Corey,  119  0.  G.  2237. 

532.  Where  both  parties  were  agreed  that  the  claim 
was  unpatentable  the  appeal  was  entertained  under  the 
supervisorv  authoritv  of  the  Commissioner. 

Reichert  v.  Brown,  124  0.  G.  2903. 

533.  Favorable  decision  as  to  right  to  make  the  claim 
not  considered  on  appeal. 

Blackford  v.  Wilder,  124  0.  G.  319. 

534.  As  the  question  of  the  operativeness  of  one  of  the 
devices  now  in  interference  is  directly  presented  to  us 
as  an  incident  of  the  main  ([uestion  of  priority,  we  hold 
that  it  is  not  one  for  our  consideration.  It  is  as  we  have 
before  indicated  a  preliminary  question  determinable 
in  the  first  instance  in  the  case  of  every  api^lication  for 
a  patent,  and  when  determined  in  favor  of  the  applicant 
is  not  appealable.  When  determined  in  his  favor,  and 
an  interference  declared  thereon  with  another  similarly 
allowed  application,  the  same  rule  applies. 

Duryea  &  White  v.  Rice,  Jr.,  126  0.  G.  1357. 

535.  Interferences  are  to  determine  }n-iority.  Though 
parties  in  these  proceedings  are  permitted  to  secure  re- 
consideration by  the  Primary  Examiner  of  his  ex  parte 


118  INTERLOCUTORY  MOTIONS  1  '>4 

conclusions  that  tlieir  oj^ponents,  aside  from  the  conflict- 
ing claims  of  priority,  are  entitled  to  patents,  and  though 
they  are  entitled  to  appear  and  oppose  such  reconsidera- 
tion, their  opponents'  right  to  a  patent,  the  interest  of  a 
party  has  never  been  considered  such  that  he  should  be 
permitted  to  appeal  from  the  Examiner's  inter  partes 
conclusion  affirming  his  opponent's  right  to  a  patent. 

Gueniffet,  Benoit  &  Nicault  v.  Wictorsohn,  117 
0.  G.  1492. 

536.  The  provisions  of  the  last  clause  cannot  be  avoid- 
ed by  a  petition  to  the  Commissioner  to  exercise  his  su- 
pervisorv  authority. 

kempshall  v.  Sieberling,  10-t  0.  G.  1395. 

537.  It  is  a  well  settled  principle  that  a  decision  re- 
lating to  sufficiency  of  disclosure  will  not  be  disturbed 
except  for  manifest  error, 

Auerbach  &  Gubing  v.  Wisweld,  108  0.  G.  289. 

538.  No  appeal  from  the  decision  of  the  Examiner 
that  affidavit  was  sufficient  to  overcome  the  reference. 

McChesley  v.  Kruger,  101  0.  G.  219. 

539.  No  appeal  can  be  taken  from  the  decision  of  the 
Primary  Examiner  allowing  claims  upon  an  affidavit 
under  Rule  75,  as  this  is  a  favorable  decision. 

Byron  v.  Maxwell,  105  0.  G.  499. 

540.  Decision  that  a  claim  is  a  good  combination  and 
is  not  anticipated  is  not  appealable. 

Wickers  &  Furlong  v.  Weinwurm,  117  0.  G.  1797. 

541.  Where  a  party  requests  an  interference,  and  the 
Examiner  rules  that  he  is  not  entitled  to  make  the  inter- 
fering claim.  .  .  .  HELD  that  the  matter  will  not  be 
reviewed  on  interlocutorv  petition  or  appeal. 

Hanson,  117  0.  G.  2632. 

542.  Question  of' new  matter  is  not  one  of  regularity 
but  one  of  right  to  make  the  claim,  from  which  no  appeal 
lies.    Brooker  v.  Smith,  119  0.  G.  652. 

543.  Matters  urged  as  irregularities,  but  which  relate 
to  right  to  make  the  claim,  will  not  be  heard  on  appeal. 

Pryor  v.  Ball  v.  Brand,  119  0.  G.  653. 

544.  There  is  no  appeal  from  an  affirmative  decision 
upon  the  right  of  a  party  to  make  a  claim,  and  equivalent 
consideration  is  not  to  be  obtained  by  presenting  the 
contention  in  different  form  and  under  a  different  name. 


1*^4  INTERLOCUTORY  MOTIONS  119 

As,  for  instance,  whetlier  the  counts  mean  tlie  same  in 
reference  to  both  a})pli cations. 

Weintranl)  v.  ITewitt,  124  0.  G.  2534. 

545.  The  contention  that  the  o})posing  parties  do  not 
have  a  construction  responding  to  a  certain  language  in 
the  issue  is  one  relating  to  the  right  to  make  the  claim 
and  not  to  interference  in  fact — No  appeal. 

Oarnel]  v.  Glasgow  v.  Cook,  120  0.  G.  901. 

546.  There  is  no  ap])eal  from  tlie  decision  of  the  Pri- 
mary Examiner  affirming  tlie  opponent's  right  to  make 
the  claims  or  the  identity  of  meaning  of  the  cUiims  in 
their  respective  applications. 

Daggett  V.  Kauimann,  127  0.  G.  3641. 

547.  A  petition  to  review  a  decision  affirming  ])atent- 
ability,  or  the  riglit  to  make  the  claim,  and  identity 
of  meaning  of  counts,  in  the  exercise  of  supervisory  au- 
thoritv,  will  be  considered  only  in  extraordinary  cases. 

Lipschutz  V.  Floyd,  130  O.  G.  2718. 
See  note  513. 


AFFIRMING  PATENTABILITY. 

548.  The  Examiners-in-Chief  having  allowed  a  claim 
corresponding  to  count  5  to  Strouble,  there  is  conse- 
quentlv  no  appeal  from  that  decision. 

Coleman  v.  Bullard  v.  Strouble,  114  0.  G.  973. 

549.  No  appeal  lies  from  the  decisions  of  the  Ex- 
aminer-of-Trade-Marks  adjudging  that  a  party  is  en- 
titled to  the  registration  of  a  trade-mark, 

Siblev  Soap  Co.  v.  Lambert  Pharmacal  Co.,  103 
0.  G.  2172. 

550.  It  would  be  only  in  a  very  clear  case  that  the 
Examiner's  decisions  affirming  patentability  would  be  re- 
viewed on  appeal. 

Rinsche  v.  Sandherr,  105  0.  G.  1780. 

551.  There  is  no  appeal  from  a  decision  of  the  Ex- 
aminer holding  that  the  issue  is  patentable  when  con- 
strued broadly  enough. 

Bachman  v.  Southgate,  111  O.  G.  805. 

552.  An  appeal  does  not  lie  from  a  decision  affirming 
patentability.     White  v.  Thomson,  101  (3.  G.  2825. 


120  INTERLOCUTORY  MOTIONS  124 

553.  No  appeal  lies  from  the  refusal  of  the  Examiners- 
in-Cliief  to  call  attention  to  the  question  of  ]^atenta])ility 
under  Rule  1'26.  So  long  as  this  rule  stands  it  must  be 
enforced,  and  it  has  been  approved  by  the  different  Com- 
missioners.    Benet  &  Meroie  v.  McOlean,  97  O.  G.  1595. 

554.  The  law  makes  no  provision  for  an  ajipeal  from 
the  favorable  decision  of  the  Examiners-in-Chief  affirming 
patentabilitv. 

Barney  v.  Kellogg,  17  O.  G.  109n. 

555.  Last  clause  affirmed. 

Faure  v.  Bradlev  v.  Crocker  v.  Cowles  &  Cowles, 
10  ().  G.  213." 

55(5.     The  supervisory  authority  of  the  Commissioner 
will  be  exercised  to  review  a  favorable  decision  on  ]iat- 
ental)ilitv  onlv  in  verv  exceptional  cases. 
Read 'v.  Scott",  101  0.  G.  419. 

557.  When  the  Examiner  has  decided  in  favor  of  the 
])atentability  of  claims,  it  would  seem  that  the  right  of 
the  oi)posing  partv  to  raise  this  issue  was  at  an  end. 

Sobey  v.  Holsclaw,  119  0.  G.  1922. 

558.  The  validity  of  this  rule,  as  to  denying  an  ap- 
peal in  decisions  affirming  patentability  of  a  claim,  af- 
firmed  by  the  Supreme  Court  of  the  United  States,  two 
justices  dissenting. 

U.  S.  ex.  rel.  Lowrv  v.  Allen,  Com.,  125  0.  G. 
2365. 


AMENDMENTS. 

559.  The  fact  that  there  has  been  a  "final  rejection" 
in  the  course  of  the  interference  should  not  be  taken  to 
mean,  as  the  applicant  seems  to  fear  it  may,  that  further 
amendments  will  not  be  permitted  except  as  an  act  of 
grace  or  leniency. 

Sanders  v.  Hawthorne  v.  Hoyt,  125  0.  G.  1347. 

560.  This  rule  does  not  authorize  amendment  of  the 
claims  during  the  interference. 

Sanders  v.  Hawthorne  v.  Hovt,  125  0.  G.  1347. 


1«J4  INTERLOCUTORY  MOTIONS  121 


ASSIGNMENT  OF  REASONS. 

')()!.  A  (juestioii  involving  tlio  right  of  an  applicant 
to  make  the  claim  in  interference  will  not  be  passed 
upon  by  the  Commissioner  on  a])j)eal  from  the  decision 
of  the  Primary  Examiner  upon  a  motion  to  dissolve  the 
interference. 

'Sweeney  v.  Jarvos,  1892  C.  ]).  97. 

Prvor  v.  Ball  v.  Brand,  119  O.  G.  (153. 

Weintraub  v.  Hewitt,  124  O.  G.  2534. 

562.  Where  no  irreguhirity  in  declaring  the  inter- 
ference independent  of  the  allegation  of  non-interference 
in  fact  was  ]n-esented,  HELD  tliat  the  appeal  as  to  tlie 
ground  of  irregularitv  in  dechiration  would  be  dismissed. 

Walker  v.  Brunhoif,  118  0.  G.  2537. 
Blackmore  v.  Hall,  118  0.  G.  2538. 

563.  Where  the  Examiner  dissolves  the  interference 
because  the  issue  is  not  })atentable,  HELD  that  an  ap- 
l)eal  relating  to  interference  in  fact  involves  a  moot  (jues- 
tion  and  will  not  be  determined. 

Newell  V.  Hubbard,  115  ().  G.  1847. 

5()4.  There  is  no  appeal  from  the  Examiner's  action 
liohling  that  the  counts  are  })atentable,  and  therefore  the 
sole  question  to  be  determined  is  whether  the  counts  in 
question  are  the  same  when  applied  to  the  structure  of 
both  parties. 

Anderson  v.  Vrooman,  123  0.  G.  2975. 

565.  Questions  cannot  be  raised  on  appeal  which  have 
not  been  raised  by  the  motion  and  passed  on  below. 

Larkin  Gompanv  v.  Pacific  Coast  Borax  Co.,  132 
0.  G.  679. 

566.  Where  it  has  been  decided  that  one  of  the  parties 
to  the  interference  has  no  right  to  make  the  claims,  the 
question  of  interference  in  fact  is  a  moot  question  and 
will  not  be  considered  on  api)eal. 

Selden  v.  Gerts  &  Palmer,  105  0.  G.  1531. 

567.  Right  to  make  claims  and  patentability  will  not 
be  reviewed  upon  appeals  on  non-interference  in  fact, 
and  irregularitv  in  declaration. 

Thullen  v.  Young  &  Townsend,  118  O.  G.  2251. 


122  INTERLOCUTORY  MOTIONS  134 

568.  On  appeal  on  question  on  priority,  patentability 
will  not  be  considered. 

Fairbanks  &  Saner  v.  Karr,  119  0.  G.  651. 

569.  Where  on  an  appeal  to  the  Commissioner  on  the 
([uestion  of  interference  in  fact  it  appears  from  the  opin- 
ion of  the  Primary  Examiner  and  the  brief  of  the  ap- 
pellant that  the  real  question  is  one  relating  to  the  right 
to  make  the  claims,  the  appeal  will  be  dismissed. 

Schofield  V.  McGovern  v.  Woods,  119  0.  G.  1924. 

570.  Contentions  which  go  to  the  right  of  a  party  to 
make  claims  can  afford  no  proper  basis  for  dissolution 
upon  the  ground  of  non-interference  in  fact.  Appeal 
dismissed.    Blackmore  v.  Hall,  119  0.  G.  2523. 

Blackmore  v.  Hall,  120  0.  G.  1477. 

571.  The  decision  of  Primary  Examiner  affirming 
patentability  will  not  be  reviewed  in  an  appeal  relating 
to  other  grounds  permitted  by  Eule  122. 

Wilkinson  v.  Junggren,  112  0.  G.  252. 

572.  This  appeal  while  nominally  on  appealable 
grounds  is  really  for  the  purpose  of  getting  a  review  of 
the  Examiner's  decision  affirming  patentability  and  ap- 
plicant's right  to  make  the  claims.  It  is  therefore  dis- 
missed.   Forsyth  v.  Emery,  113  0.  G.  2215. 

573.  An  affirmative  decision  upon  the  right  of  the 
appellee  to  make  the  claim  is  not  appealable  and  will 
not  be  considered  in  an  appeal  on  other  grounds. 

Kinney  v.  Goodhue,  123  0.  G.  1663. 

574.  A  new  appeal  fee  must  be  paid  on  the  api)ea] 
denying  the  jDatentability  of  a  claim  in  an  mter  partes 
matter  notwithstanding  an  appeal  has  been  once  taken  on 
that  point  on  an  c.v  porta  matter. 

Cheney  v.  Venn,  125  0.  G.  1703. 

575.  Applicant's  claims  were  involved  in  two  inter- 
ferences. A  motion  has  been  made  in  each  on  the  ground 
of  lack  of  patentability,  which  was  granted.  Held  that  one 
appeal  fee  was  sufficient. 

Miller  y.  Mann  v.  Bacon  v.  Torrance,  115  0.  G. 
1063. 

576.  Where  an  interference  is  dissolved  by  the  Pri- 
mary Examiner  on  motion,  appeal  cannot  be  taken  by  the 


1  24  INTERLOCUTORY  MOTIONS  123 

party  bringing  such  motion,  though  granted  on  a  part 
only  of  the  grounds  urged  therein. 

Zeitinger  v.  Reynolds  y.  Mclntire,  1891  C.  D.  212. 

Ries  y.  Thomson,  1891  C.  D.  233. 

577.  No  valid  reason  appears  to  exist  for  making  an 
exception  where  the  motion  is  appealable  to  the  Ex- 
aminers-in-Chief  and  in  allowing  only  one  party  to  the 
contested  proceedings  to  appear  and  be  heard. 

Duncan  y.  Westinghouse,  Jr.,  6G  0.  G.  1005. 

578.  When  both  parties  moye  to  dissolve  the  inter- 
ference upon  all  grounds  permitted  by  the  rules  and  the 
motions  are  granted,  HELD  that  an  appeal  will  not  be 
entertained  since  a  party  cannot  aj^peal  from  a  decision 
in  his  favor  merely  because  he  disagrees  as  to  the  reason. 

Scott  v.  Badeau,  116  0.  G.  2007. 

579.  Favorable  decision  not  appealable. 
Potter  v.  Mcintosh,  116  0.  G.  1451. 

580.  Where  a  review  is  requested  by  G.  of  Examiner's 
rulings  upon  the  meaning  of  claims  in  his  decision  grant- 
ing G.'s  motion  for  dissolution,  HELD  that  G.  was  not 
entitled  to  such  review:  his  motion  for  dissolution  as  to 
counts  embodying  the  substance  of  these  claims  having 
been  granted. 

Votey  v.  Gaily,  119  0.  G.  339. 

581.  Where  a  party  made  no  motion  for  dissolution 
he  cannot  appeal  from  the  refusal  of  a  motion  made  by 
another  party. 

Townsend  v.  Copeland  v.  Robinson,  119  0.  G. 
2523. 

582.  The  supervisory  authority  will  not  be  exercised 
to  review  a  favorable  decision  on  the  question  of  pat- 
entability except  in  a  very  clear  case. 

Eschinger  v.  Drummond  &  Lieberknecht,  121  0. 
G.  1348. 

583.  There  is  no  reason,  as  was  pointed  out  in  ]\liller 
V.  Perham,  121  0.  G.  2627,  why  the  Office,  having  once 
decided  that  a  party  is  entitled  to  make  certain  claims, 
should  reconsider  the  question  on  the  partj^'s  own  motion. 

Goodwin  v.  Smith,  123  0.  G.  998. 

584.  It  is  the  substance  of  the  decision  which  deter- 


124  INTERLOCUTORY  MOTIONS  134 

mines  whether  it  is  appealable  to  the  Coiiiinissioiier  and 
not  the  reason  given  by  the  Examiner. 

Von  Welsbaeh  v,  Lungren,  48  0.  G.  537. 

Cited,  85  O.  G.  1738. 

585.  Only  one  injnred  mav  appeaL 
Judd  V.  Campbell,  110  0.  G.  2017. 

586.  No  appeal  from  favorable  decision. 
Cazin  v.  Von  Welsbaeh,  119  0.  G.  650. 

587.  Last  clause.  A  petition  will  not  be  entertained 
except  in  a  clear  case,  to  review  a  favorable  decision. 
Denton  et  al.  v.  Riker,  98  ().  G.  415. 

588.  Xon-appeal  lies  from  a  refusal  to  declare  an  in- 
terference with  an  existing  patent  accompanied  by  an  al- 
lowance of  applicant's  claims  under  the  last  clause. 

Gibboney,  105  0.  G.  976. 

REHEARINGS. 

589.  There  is  no  appeal  from  a  decision  refusing  a 
rehearing. 

Carmichael  v.  Fox,  104  0.  G.  1656. 
Brvon  v.  Henrv,  104  0.  G.  1895. 
Reynolds  v.  Bean,  101  0.  G.  2821. 
Roemer  v.  Neumann,  49  0.  G.  1535. 
Cole  V.  Zarbock  v.  Greene,  116  O.  G.  1451. 

DECISION  OF  THE  COMMISSIONER. 

590.  The  judgment  of  the  Examiner  will  not  be  con- 
trolled by  an  order  made  in  advance, 

Marks  v.  Greenawall,  118  0.  G.  1967. 

591.  An  appellant  will  not  be  heard  to  argue  that  an 
interference  should  be  dissolved,  upon  the  ground  under 
Rule  122,  not  argued  before  the  Examiner. 

Pfingst  V.  Anderson,  118  0.  G.  1067. 

592.  Last  clause.  This  clause  may  not  be  avoided  by 
considering  the  standing  of  the  application  as  evidence. 

Shupphaus  v.  Stevens,  95  O.  G.  1452. 

593.  The  Commissioners  may,  upon  api)eal  upon  points 
not  involving  the  question,  declare  that  there  is  no  con- 
flict in  fact. 

Schupphaus  v.  Stevens,  95  O.  G.  1454. 


1  24  INTERLOCUTORY  MOTIONS  125 

594,  Does  not  prevent  tlie  Com  'r  froiti  considering  any 
reason:  for  dissolving  lan  interference  whieli  mar  be 
brouglit  to  his  attention  or  which  lie  may  discover.  A 
])etition  will  not  be  entertained  when  it  seeks  to  obtain 
indirectly  a  review  of  an  Examiner's  decision  from  which 
no  appeal  lies,  bv  merelv  misnaming  the  proceedings. 

Goss  V.  Scott,  96  0.  G.  844.  ^ 

595.  Decision  of  Primary  Examiner.  When  a  motion 
to  dissolve  is  brought  upon  the  grounds  specified  in 
Rule  122  the  Examiner  should  decide  the  motion  upon  all 
grounds,  and  if  the  decision  is  of  such  a  nature  that  ap- 
peal therefrom  may  be  taken  he  should  fix  a  limit  of 
appeal.    Duryea  &  White  v.  Rice,  115  O.  G.  803. 

59(i.     If  a])pealable  grounds  are  })resented  an   aj^peal 
ma}"  not  be  refused  by  an  Examiner  because  he  chooses 
to  decide  the  motion  upon  unappealable  grounds. 
Silverman  v.  Hendrickson,  88  O.  G.  1703. 

TIME  WHEN  TAKEN— EXCUSE  FOR  DELAY— PE- 
TITION  TO   EXTEND   TIME. 

597.  An  appeal  from  a  decision  on  a  motion  w^ill  not 
be  entertained  and  considered  nunc  pro  tunc  after  the 
limit  of  ai^peal  has  expired,  because  of  a  showing  that  it 
was  the  intention  to  appeal  and  the  failure  was  due  to  a 
misunderstanding  between  attornevs. 

Gerdon  v.  Elirhardt,  116  O".  G.  595. 

598.  Negligence  or  oversight  of  attorneys  not  suffi- 
cient excuse  for  not  taking  appeal  within  the  time  limited. 

Brissenden  v.  Roesch,  118  O.  G.  2253. 

599.  Since  the  defeated  jiarty  failed  to  take  his  a])peal 
within  the  limit  set,  he  is  not  now  entitled  to  have  that 
decision  reviewed  bv  another  tribunal. 

Briggs  V.  Conley,  104  O.  G.  1119. 

600.  A  limit  of  appeal  should  be  set  in  decisions  dem^- 
ing  a  right  to  make  a  claim. 

Judd  V.'  Campbell,  110  0.  G.  2016. 

601.  Where  in  an  interference  it  is  decided  that  one 
of  the  parties  has  no  right  to  make  the  claim,  it  seems 
clear  that  it  is  not  just  to  the  other  party  to  withhold  in- 
definitely his  application,  which  is  ready  to  issue,  merely 


126  INTERLOCUTORY  MOTIONS  124 

to  await  the  pleasure  of  the  otlier  party.    A  limit  of  ap- 
])eal  should  be  set. 

Hutin  V.  LeBlanc  v.  Steinmetz  v.  Scott  v.  Fair- 
fax, 97  0.  G.  2744. 

i](y2.  No  appeal  from  a  decision  of  the  Examiner  ex- 
tending time  for  taking  testimony.  It  can  only  be 
modified  by  the  exercise  of  the  supervisory  authority  of 
the  Commissioner,  and  this  onlv  in  unusual  cases. 

Wickers  &  Furlong  v.  Weinwurm,  129  0.  G.  2501. 

See  however,  Kinsman  v.  Strohm,  125  0.  G.  1699. 

603.  The  bringing  of  motions  or  the  taking  of  petitions 
to  the  Commissioner  will  not  stay  the  running  of  the 
limit  of  appeal  from  a  decision  on  priority. 

Pym  V.  Hadaway,  131  0.  G.  692. 

TO  THE  BOARD  OR  TO  THE  COMMISSIONER. 

604.  Appeal  denying  motion  to  dissolve  for  non-inter- 
ference in  fact  is  to  the  Commissioner  and  not  to  the 
Board.     Zeidler  v.  Leech,  1891  C.  D.  9. 

605.  A  motion  of  one  party  to  amend  his  application 
by  inserting  two  claims  taken  from  his  opponent's  ap- 
l^iication,  not  appealable  directlv  to  the  Commissioner. 

Berry  v.  Fitzsimmons,  99  0.  G.  863. 

606.  Interference  in  fact  appealable  to  Commissioner 
in  person.  Oldham  &  Padburv  v.  Peck  v.  Clement  v.  Rich- 
ards, 99  0.  G.  670.^ 

607.  Appeal,  from  decision  dissolving  interference 
because  there  is  no  right  to  make  the  claims,  appealable 
to  Examiners-in-Chief. 

Story  V.  Criswell,  100  0.  G.  683. 

608.  An  appeal  from  an  action  holding  that  there  is 
no  such  combination  does  not  lie  to  the  Commissioner. 

Webber,  98  0.  G.  2362. 

DECISIONS  OF  THE  BOARD. 

609.  If  the  Examiners-in-Chief  are  equally  divided 
the  Primary  Examiner  is  affirmed,  and  upon  questions 
of  patentabilitv  there  is  no  appeal. 

Porter  v.  Mcintosh,  120  0.  G.  1823. 


134  INTERLOCUTORY  MOTIONS  127 

610.  The  only  (luestion  tliat  can  be  i:>resented  to  the 
Board,  under  tlie  Statute,  on  an  appeal  in  an  interference 
case  upon  the  nierits,  is  priority  of  invention.  The  Board 
has  no  right  to  make  the  question  of  whether  there  is  an 
interfering  matter  in  tlie  device  a  part  of  tlieir  decision. 

Brown  v.  La  Dow,  18  0.  G.  1019. 

611.  No  appeal  from  favorable  decision  of  the  Board 
on  questions  of  right  to  make  tlie  claim. 

Josleyn  v.  Hulse,  132  0.  G.  814. 

Coleman  v.  Bullard  v.  Struble,  114  0.  G.  978. 

MISCELLANEOUS. 

Bechman  v.  Southgate,  123  0.  G.  2309. 

Last  clause. 

In  re  Locke,  94  0.  G.  432. 

Mvers  v.  Sarfert,  96  0.  G.  1037. 

Reece  v.  Fenwick,  97  0.  G.  188. 

Hinkley  v.  Barker,  97  0.  G.  2742. 

Sharer  v.  McHenrv,  91  0.  G.  1034. 

Wheeler  v.  Seeberger,  125  0.  G.  2363. 

Hopfelt  V.  Read,  106  0.  G.  767. 

Myers  v.  Brown,  112  0.  G.  2093-4. 

Schubert  v.  Munro,  113  0.  G.  284-3. 

Gully  V.  Brand,  113  0.  G.  852. 

Last  clause. 

Harnisch  v.  Gueniffet,  Benoit,  &  Nicault,  117  0.  G. 
1492-3. 

Allen,  Commissioner,  v.  U.  S.  ex  rel.  Lowry  et  al.,  116 
0.  G.  2254-3. 

Neth  V.  Tamplin  v.  Ohnier,  120  0.  G.  323.  ^ 

See  note  to  114. 

Last  paragraph. 

Brewer,  Tilv,  Rehfuss  &  Rehfuss  v.  Dement,  116  0.  G. 
2010. 

Duryea  &  White  v.  Rice,  123  O.  G.  2627. 

Locke  V.  Baldwin,  124  0.  G.  317. 

Harnisch  v.  Gueniffet,  Benoit  &  Xicault,'128  0.  G.  355. 


128  INTERLOCUTORY  MOTIONS  J  '^(J 

RULE  126. 

126.  The  examiner  of  iuterfereiifes  or  the  exainiiiers- 
in-chief  may,  either  before  or  in  their  decision  on  the 
question  of  priority,  direct  the  attention  of  the  ( Com- 
missioner to  any  matter  not  relating  to  priority  which 
may  have  come  to  their  notice,  and  which,;  in  their 
o))inion,  establishes  the  fact  that  no  interference  exists, 
or  that  there  has  been  irregularity  in  declaring  the  same 
(Rule  122),  or  which  amounts  to  a  statutory  bar  to  the 
grant  of  a  patent  to  either  of  the  parties  for  the  claim 
or  claims  in  interference.  The  Commissioner  may,  be- 
fore judgment  on  the  question  of  priority,  suspend  the 
interference  and  remand  the  case  to  the  primary  examiner 
for  his  consideration  of  the  matters  to  which  attention 
has  been  directed.  From  the  decision  of  the  examiner 
appeal  may  be  taken  as  in  other  cases.  If  the  case  shall 
not  be  so  remanded,  the  primary  examiner  will,  after 
judgment,  consider  any  matter  affecting  the  rights  of 
either  joarty  to  a  patent  which  may  have  been  called  to 
his  attention,  unless  the  same  shall  have  been  previously 
disposed  of  by  the  Commissioner. 


STATUTORY  BAR  SUGGESTED. 

611.  If  public  use  for  more  than  two  years  is  shown 
by  preliminary  statement  the  interference  should  be  dis- 
solved.    Schenck  v.  Rider,  1870  C.  D.  135. 

612.  The  question  of  priority  decided  by  the  Commis- 
sioner and  the  case  referred  to  the  Primary  Examiner  to 
determine  the  question  of  novelty  in  view  of  newly  dis- 
covered references. 

Yost  v.  Heston,  1871  C.  D.  226. 

613.  The  question  of  novelty  is  alwaj^s  a  proper  one 
for  consideration  of  the  Office  at  any  time  prior  to  the 
grant  of  a  patent.  An  interference  case  re-opened  to 
admit  testimony  of  that  kind  after  the  time  for  taking 
testimony  had  expired.  The  Examiner  of  Interferences 
directed  to  assign  dates  for  taking  such  testimonv. 

Wood  V.  Morris,  1873  C.  D.  39. 
See  Hovev  v.  Hufeland. 


1  •>(;  IXTERLOCITTORY  MOTIONS  129 

614.  I  believe  it  lias  been  the  custom  of  the  Coin- 
iiiissioners,  although  such  matters  are  purely  ex  parte,  to 
hear  other  parties,  in  order  that  he  mig'ht  be  as  fully  in- 
foi-med  as  possible  in  relation  to  the  merits  of  the  ease. 

Com.  Spear  in  Carter  &  Dwver  v.  Perrv  &  Dickey, 
1875  C.  D.  111. 

615.  In  the  case  of  Rouse  and  Stoddard,  75  C.  D.  33, 
the  practice  of  sending  letters  of  inquiry  to  the  inventor 
who  has  filed  and  abandoned  an  application,  calling  for 
information  in  the  form  of  affidavits  as  to  public  use  of 
the  invention,  and  informing  the  applicant  that  another 
application  for  the  same  invention  is  pending,  was  in- 
augurated; this  practice  was  discontinued  in  the  case  of 
Casilear  &  Mclntire,  1875  C.  D.  117. 

616.  Nor  can  I  think  that  an  interference  proceeding 
authorized  by  law  for  one  specific  purpose  (i.  e.  to  deter- 
mine priority  of  invention)  can  be  rightfully  used  by  the 
Commissioner  for  any  other  purpose,  and  in  my  judg- 
ment, no  part  of  the  testimony  taken  and  submitted  in 
such  case,  if  plainly  outside  the  issue,  is  evidence  at  all 
against  the  right  of  the  adverse  party.  This  decision  re- 
lated to  abandonment  bv  ])ublic  use  apparentlv. 

Smith  V.  Perryi  9  0.  G.  688. 

617.  The  law  of  1836  provided  that  in  connection  with 
interference  proceedings,  like  proceedings  should  be  had 
to  determine  which,  or  whether  either  of  the  applicants 
is  entitled  to  receive  a  patent  as  prayed  for.  But  in  the 
act  of  1870  this  provision  was  omitted. 

Smith  V.  Perry,  9  0.  G.  688. 

618.  When  the  Examiner  of  Interferences  finds  that 
neither  party  is  the  first  and  original  inventor  he  should 
render  his  judgment  accordingly.  As  this  question  re- 
lates to  priority  it  should  be  appealed  to  the  Board  and 
not  referred  to  the  Connnissioner  under  this  rule. 

Wood  V.  Eames,  17  0.  G.  512. 

619.  The  i^rovisions  of  this  rule  must  not  be  construed 
to  provide  an  alternate  remedy,  but  can  only  be  availed 
of  when  motions  relating  to  a  statutory  bar  cannot  be 
made  as  prescribed  in  the  other  rules. 

Barney  v.  Kellogg,  17  0.  G.  1096. 

620.  The  joint  patentees  proving  not  to  be  joint  in- 
ventors the  interference  was  decided  against  them  and 


130  INTERLOCUTORY  MOTIONS  126 

the  case  was  remanded  to  tlie  Primary  Examiner  to  con- 
sider whether  there  was  not  a  statutory  bar  existing-  to 
the  grant' of  the  patent  by  reason  of  the  right  of  one  of 
said  joint  patentees  to  obtain  a  patent. 

Harrison  v.  Hogan,  18  0.  G.  921. 

621.  If  the  question  presents  itself  in  the  preliminary 
statement,  applicant  should  be  given  a  chance  to  avoid 
the  objection  by  amendment;  if  he  does  not  do  so  the  pre- 
liminary statement  should  be  approved  if  correct  in  other 
particulars,  and  in  his  decision  of  the  question  of  priority 
the  Examiner  of  Interferences  should  call  the  attention 
of  the  Commissioner  to  the  existence  of  the  statutory 
bar.    Hicks  v.  Keating  v.  Purvis  &  Bilgram,  40  0.  G.  343. 

622.  The  question  of  statutory  bar  as  contemplated 
in  Kule  120  relates  to  matter  that  is  purely  a  bar  as  con- 
tradistinguished from  title,  or  whether  applicants  are 
joint  inventors.  Under  the  present  rule  a  statutory  bar 
to  either  one  of  the  parties  in  interference  may  call  into 
exercise  the  action  authorized  by  it.  Formerly  it  was 
only  a  statutory  bar  to  both. 

Hicks  V.  Keating  v.  Purvis  &  Bilgram,  40  0.  G. 
343. 

623.  The  question  as  to  what  is  the  correct  practice 
under  this  rule  when  joint  applicants  prove  not  to  be 
joint  inventors  has  presented  itself  in  a  variety  of  phases 
to  the  Commissioners,  and  their  conclusions  are  by  no 
means  in  harmony.  During  the  period  covered  by  these 
decisions  the  rule  has  been  changed  and  modified,  but 
this  fact  will  not  explain  the  conflict  in  them.  Decisions 
reviewed.    Hicks  v.  Keating  v.  Purvis  &  Bilgram,  40  0.  G. 

343. 

624.  Public  use  proceeding  on  motion  of  defeated 
partv  to  an  interference  refused. 

Beardslee  v.  Moeslein,  46  0.  G.  1640. 

625.  When  an  allegation  of  public  use  comes  up  for 
consideration  in  connection  with  an  application  which  is 
being  considered  ex  parte  after  the  termination  of  the 
interference  proceedings,  the  proper  practice  is  for  the 
Examiners  to  pass  upon  the  question  whether  or  not  a 
prinia  facie  case  of  public  use  has  been  established,  re- 
jecting the  claims  in  the  case  if  he  decided  the  question 
in  the  affirmative. 


±26  INTERLOCUTORY  MOTIONS  131 

Unsworn  statements  do  not  make  a  prima  facie  case. 
Beatty,  56  0.  G.  1563. 

626.  The  interference  should  not  be  delayed  by  public 
use  proceedings  unless  for  extraordinary  and  amply 
sufficient  reasons. 

Campbell  v.  Brown,  56  0.  G.  1565. 

627.  The  invalidating  two  years'  public  use  of  the 
statute  does  not  require  the  knowledge,  allowance  or 
consent  of  the  inventor. 

Drawbangh,  57  0.  G.  546. 

628.  The  establishment  of  abandonment  or  of  two 
years'  public  use  requires  proof  so  clear  as  to  put  the 
matter  beyond  all  reasonable  doubt. 

Bury  V.  Thompson,  58  0.  G.  1255. 

629.  With  the  small  sum  appropriated  by  Congress 
for  conducting  public  use  proceedings  the  Patent  Office 
is  not  justified  in  instituting  such  proceedings  unless  a 
strong  prima  facie  case  is  made. 

Fay  V.  Conradson,  65  0.  G.  75. 

630.  Where  the  structure  of  one  of  the  parties  to  an 
interference  is  inoperative,  priority  of  invention  cannot 
be  awarded  to  him. 

Glidden  v.  Xoble,  67  0.  G.  676. 

631.  Bar  of  public  use  not  avoided  bv  caveat. 
Meucci,  51  0.  G.  299. 

632.  Interference  suspended  to  take  testimony  relative 
to  public  use  proceedings,  without  a  recommendation. 

Sanford  Mills  v.  Aveyard,  88  0.  G.  129. 

633.  Bar  arising  should  not  be  considered  during  the 
interference  proceeding  by  subordinate  tribunal,  but  re- 
ferred to  Commissioner. 

Paget  V.  Bugg,  89  O.  G.  1342. 

634.  In  the  public  use  proceeding  a  copy  of  an  applica- 
tion involved  refused  protesting  j^artv. 

National  Phonograph  Co.,  89  "O.  G.  1669. 

635.  The  Commissioner  may  take  notice  of  these  mat- 
ters on  his  own  motion. 

Anderson  &  Dyer  v.  Lowrv,  89  0.  G.  1861. 
Larter  v.  Jones,  92  0.  G.  383. 


132  INTERLOCUTORY  MOTIONS  ±2(y 

636.  The  <iuestioii  of  statutory  bar  considered  by  Com- 
missioner upon  appeal  on  question  under  Rule  122. 

Yaliquet  v.  Johnson.  92  O.  G.  1795. 

637.  Whether  or  not  the  Board  shall  suggest  statu- 
tory bar,  etc.,  is  optional  with  them  and  cannot  be  re- 
viewed on  appeal. 

Walsh  V.  Hallbauer,  91  ().  G.  223. 

638.  Primary  Examiner  and  Board  take  ditferent 
views.     Thomson  v.  Weston,  91  0.  G.  986. 

Two  vears'  public  use  in  designs. 
■  Fournier,  91  0.  G.  2166. 

639.  If  the  Examiner  be  of  the  opinion  that  certain 
actions  should  be  made  in  an  application  which  is  in- 
volved in  an  interference,  and  said  actions  relate  to  mat- 
ters which  do  not  in  any  way  relate  to  or  affect  the  in- 
terference then  pending,  the  proper  practice  to  follow  is 
for  the  Examiner  to  file  a  request  with  the  Commissioner 
that  jurisdiction  of  the  case  be  restored  to  him  for  the 
purpose  of  making  such  action. 

Hildreth,  97  0.  G.  1371. 

Felbel  v.  Oliver,  100  0.  G.  2175-6. 

Read  v.  Scott,  101  0.  G.  419. 

610.  The  question  as  to  whether  one  of  the  parties 
received  knowledge  of  the  invention  from  a  third  party 
will  not  be  considered  in  an  interference  proceeding. 
Otherwise,  if  it  is  a  question  of  originalitv  between  the 
parties.    Trufant  v.  Prindle  v.  Brown,  101  6.  G.  1608. 

Public  use  proceedings  instituted. 
Weber,  101  O.  G.  2570. 
Snider  v.  Bunnell,  101  0.  G.  2572. 
Fessenden  v.  Potter,  101  0.  G.  2823. 
Osborn  v.  Hotsapillar,  102  0.  G.  1296-7. 

611.  The  Board  thought  that  no  interference  in  fact 
existed  and  that  one  of  the  parties  had  no  right  to  make 
the  claim.  Case  remanded  to  Primary  Examiner,  who  held 
that  an  interference  existed  and  the  party  had  a  right 
to  make  the  claim.  Case  placed  on  Commissioner's  dock- 
et for  final  decision.     Snider  v.  Bunnell,  103  0.  G.  890. 

612.  The  rules  properly  provide  that  a  favorable  de- 
cision by  the  Examiner  upon  the  merits  is  not  appealable ; 
but  at  the  same  time  they  provide  for  review  of  such  a 


i2Ct  INTERLOCUTORY  MOTIONS  133 

decision  in  certain  cases,  not  as  a  matter  of  right  by  the 
])ai-ties,  hut  as  a  matter  of  jjuhlic  policy. 
Snider  v.  i^umiell,  10:5  ().  G.  890. 

643.  Motion  to  transmit  to  P.  E.  to  consider  question 
of  two  years'  public  use,  noted  by  Examiner  of  Interfer- 
ences, also  asking  to  have  a  foreign  patent  considered 
as  an  anticipation.  Eefused.  The  evidence  taken  in  an 
interference  cannot  without  further  proceedings  be  used 
as  the  basis  for  the  rejection  of  claims  on  the  ground  of 
l)ublic  sale  of  the  invention.  Questions  relating  to  antici- 
patory matter  should  be  raised  by  a  motion  to  dissolve 
under  llule  122. 

Dittgen  v.  Parmenter,  103  0.  G.  1164. 

644.  It  is  the  question  not  the  evidence  which  is  trans- 
mitted for  consideration  and  determination.  In  passing 
upon  a  question  so  transmitted  the  Examiner  may  avail 
himself  of  any  information  which  he  may  obtain  throwing 
light  upon  the  question.  To  prevent  surprise  due  and 
timely  notice  should  be  given  of  any  facts  to  be  consider- 
ed which  are  not  disclosed  bv  the  record. 

Greenwalt  v.  Mark,  103  0.  G.  1913. 

645.  In  public  use  proceedings  the  Patent  Office  alone 
represents  the  public  and  its  approval  is  necessary  to 
make  anv  agreement  affecting  the  merits  of  the  case 
binding.  '  Kephart,  103  0.  G.  1914. 

646.  It  is  designed  by  the  practice  instituted  in  this 
case  to  avoid  these  complications  in  those  cases  where 
the  recommendation  of  the  Examiners-in-Chief  covers 
matters  considered  and  passed  ujoon  by  the  Primary  Ex- 
aminer in  an  ex  parte  decision  by  substituting  at  the  outset 
the  entry  of  a  rejection  pro  forma  by  the  Primary  Ex- 
aminer, putting  the  case  at  once  in  condition  for  a  course 
of  appeals  which  mav  be  carried  to  the  Court  of  Appeals. 

Holz  V.  Hewitt,  127  0.  G.  1992. 
Greenawalt  v.  Mark,  103  0.  G.  1913. 

647.  Claims  cannot  be  rejected  or  held  unpatentable 
upon  such  affida\dts  alone. 

Shrum  v.  Baumgarten,  104  0.  G.  577. 

648.  Such  investigation,  however,  would  not  be  made 
as  a  part  of  the  interference,  but  as  an  independent  pro- 
ceeding. It  would  be  made  only  upon  motion  for  sus- 
pension for  that  purpose,  accompanied  by  a  satisfactory 


134  INTERLOCUTORY  MOTIOlsfs  1»>6 

showing  of  public  use  and  an  expression  of  a  willingness 
on  the  part  of  the  moving  party  to  produce  the  witnesses 
for  examination  and  to  bear  the  expense  of  the  proceed- 
ing, including  the  expense  of  an  officer  detailed  from  the 
Office  to  conduct  the  proceeding. 

Shrum  v.  Baumgarten,  104  0.  G.  577. 

649.  Public  use  proceedings  not  applicable  to  trade- 
marks.   Dietz,  104  0.  G.  1852. 

650.  Tlie  Examiner  of  Interferences  was  of  the  opinion 
that  one  applicant  had  no  right  to  make  the  claims.  The 
matter  referred  to  the  Primary  Examiner  who  thous:ht 
applicant  had  such  right.  The  matter  was  then  referred 
to  the  Board  who  held  that  applicant  had  no  such  right. 
The  Commissioner  directed  that  a  limit  of  time  to  appeal 
from  the  decision  of  the  Board  be  set. 

Eobinson  v.  Copeland,  105  0.  G.  263. 

651.  Under  this  rule,  the  Examiners-in-Chief  may,  if 
they  deem  it  advisable,  call  the  attention  of  the  Com- 
missioner to  any  matter  not  relating  to  priority  which  in 
their  opinion  establishes  the  fact  that  no  interference 
exists  or  that  there  has  been  irregularity  in  declaring  the 
same  or  which  amounts  to  a  statutory  bar  to  the  grant 
of  a  patent  to  either  party  for  the  claim  in  interference. 
This  is  not,  however,  compulsory  upon  them,  and  if  they 
refuse  to  do  so,  no  appeal  lies. 

Walsh  V.  Hallbauer,  94  0.  G.  223. 
Wilcomb  V.  Lasher,  105  0.  G.  743. 

652.  Where  he  (the  Primary  Examiner)  disagrees 
with  the  other  tribunals,  it  is  believed  that  the  question 
should  be  regarded  as  unsettled  and  should  be  referred 
to  a  higher  tribunal  for  decision. 

Snider  v.  Bunnell,  103  0.  G.  890. 
Mills  V.  Torrence,  106  0.  G.  544. 

653.  Tlie  Examiner's  action  or  failure  to  act  under 
this  rule  is  not  appealable.  It  is  in  eifect  a  favorable 
decision  as  to  the  patentability  of  the  claims. 

Woods  V.  Waddell,  106  0.  G.  2017. 
Kempshall  v.  Sieberling,  107  0.  G.  541. 
Dittgen  v.  Parmenter,  107  0.  G.  1098. 

654.  The  question  of  public  use  is,  furthermore,  one 
which  eannot  properly  be  decided  against  Winter  without 


l»i(5  INTERLOCUTORY  MOTIONS  135 

g-iviiig  him  an  opportunity  to  take  rebutting  proofs,  since 
that  evidence  was  taken  upon  a  different  issue. 

Weber,  101  0.  G.  2570. 

Winter  v.  Slick  v.  Volkommer,  107  0.  G.  1659. 

655.  If  both  parties  file  an  abandonment  of  the  in- 
vention the  Examiner  of  Interferences  should  call  at- 
tention to  this  bar. 

Krakaw  v.  Harding,  107  0.  G.  1662. 

656.  The  question  of  patentability  is  ex  parte  in  char- 
acter, and  if  it  becomes  necessary  to  take  testimony  upon 
that  cjuestion  the  Office  will  investigate  in  a  proceeding 
independent  of  the  interference. 

Steinmetz  v.  Hewitt,  107  0.  G.  1972. 

657.  Where  public  use  is  shown  by  testimony  regu- 
larly taken,  its  effect  cannot  be  overcome  by  ex  parte  affi- 
davits, but  oiilv  bv  evidence  regularlv  taken. 

Tournier,  108  0.  G.  798. 

658.  It  is  contrary  to  usual  practice  to  suspend  an 
interference  between  two  ajDplicants  to  investigate  the 
question  of  public  use. 

Perrault  v.  Pierce,  108  0.  G.  2146. 

659.  The  rule  provides  sufficiently  for  the  considera- 
tion by  the  Office  on  its  own  motion  of  matters  which 
might  have  been  made  the  basis  of  the  motion  mentioned 
in  Rule  122,  but  which  were  not  so  presented;  and  the 
action  of  the  Examiner  refusing  to  transmit  will  not  be 
disturbed  except  in  a  clear  case. 

Sturgis  V.  Hopewell,  109  0.  G.  1008. 

660.  In  an  interference  between  an  applicant  and  a 
patentee  if  the  Examiner  of  Interferences  is  of  the  opinion 
that  the  applicant  is  not  entitled  to  make  the  claims,  the 
case  should  be  transmitted  to  the  Primary  Examiner  for 
immediate  determination. 

Hall  V.  Weber,  109  0.  G.  1607. 

661.  Successful  applicant  did  not  think  the  invention 
patentable  to  him.     Interference  dissolved. 

Lipe  v.  Miller,  109  0.  G.  1608. 

662.  The  question  of  public  use  may  be  determined 
infer  partes. 

Mills  V.  Torrence,  110  0.  G.  857. 
Judd  V.  Campbell,  110  0.  G.  2017. 


loG  INTERLOCUTORY  MOTIONS  13(} 

()().').     A  iiitH'liaiiical  ni)i)lic'atioii  cannot  effect  the  bur- 
den of  ])roof  in  interference  between  desi^^ns. 
McArthur  v.  Gilbert,  110  0.  G.  2509. 

()()4.  It  is  held,  therefore,  that  when  the  question  upon 
which  the  Examiner  and  the  Examiner  of  Interferences 
(litTcr  relates  to  the  patentability  of  the  claims  or  the 
right  of  one  of  the  parties  to  make  the  claims,  and  there- 
by involves  the  merits  of  the  invention,  the  interference 
should  be  referred  to  the  Examiners  in  Chief;  but  when 
the  dill'erence  of  opinion  is  merely  upon  formal  matters, 
such  as  interference  in  fact  or  irregularity  in  declaring 
the  interference,  the  case  should  be  referred  to  the  Com- 
missioner for  final  determination. 

Weber  v.  Hall,  111  0.  G.  809. 

665.  If  an  alleged  anticipating  patent  is  discovered 
too  late  for  a  motion  under  Eule  122,  it  may  still  be 
called  to  the  attention  of  the  Commissioner  under  this 
Rule.     Schrimer  v.  Lindemann  &  Stock,  111  0.  G.  2222. 

666.  Originally  there  were  two  counts  in  the  interfer- 
ence, but  under  the  procedure  set  forth  in  Rule  126  one 
of  these  has  been  eliminated. 

Spaulding  v.  Norden,  112  0.  G.  2091. 

667.  Public  use  alleged  against  some  of  the  counts  but 
not  all.  Held  that  the  question  of  public  use  if  necessarily 
raised  at  all,  should  be  after  the  conclusion  of  the  inter- 
ference.   Moss  V.  Blaisdell,  113  0.  G.  1703. 

668.  In  the  matter  of  trade-marks. 

Prank  &  Gutmann  v.  Macwilliam,  114  0.  G.  542. 

669.  Public  use  suggested  by  assignee  of  entire  in- 
terest sufficient  to  warrant  action  bv  the  Office. 

Cummings,  114  0.  G.  2090." 

670.  A  case  transmitted  to  consider  patentability 
where  one  party  was  a  patentee. 

The  Office  will  not  waste  time  deciding  a  moot  ques- 
tion simplv  to  avoid  casting  cloud  upon  a  patent. 
Yarnell  v.  Pope,  115  O.  G.  2136. 

671.  If  an  applicant  in  contest  with  a  patentee  ad- 
mits a  statutorv  bar  to  himself  the  interference  should  be 
dissolved.     Griffith  v.  Dodgson,  116  0.  G.  1731. 

672.  If  Carver  is  of  the  opinion  that  there  is  no  inven- 
tion in  fact,  he  is  not  without  remedy.     The  provisions 


126  INTERLOCUTORY  MOTIONS  137 

of  Rule  126  are  available  when  this  case  comes  on  for 
final  liearing. 

Carver  v.  MeCanna,  117  0.  G.  599. 

In  re  Mill,  117  0.  G.  904. 

673.  The  question  of  patentability  and  interference 
in  fact  were  iiresented  for  consideration  on  motion  but 
not  pressed,  and  that  they  were  argued  before  the  Ex- 
aminer of  Interferences  and  the  Examiners-in-Chief  on 
final  hearing  and  these  tribunals  asked  to  make  a  recom- 
mendation under  Rule  126  and  such  recommendation  was 
refused,  these  facts  do  not  waq-ant  a  review  bv  tlie  Com- 
missioner.   Bell  V.  Eloi-a,  117  0.  G.  2362. 

674.  The  Examiner  referred  the  case  to  the  Com- 
missioner because  he  thought  the  first  count  j^atentable 
to  C.  in  the  interference,  X.  v.  C  v.  R.,  and  not  patent- 
able to  X.  or  R:  HELD  that  the  two  interferences  should 
proceed.    Xewell  v.  Rose,  119  0.  G.  337. 

675.  Reference  under  Rule  126  consideration  of  merits 
of  an  application  not  postponed  on  account  of  possible 
erroneous  decision  on  ])rioritv. 

Xewell  V.  Clifford  v.  Rose,  119  0.  G.  1583. 
Sobey  v.  Holsclaw,  119  O.  G.  1922. 

676.  It  is  thought  that  the  Commissioner  should  re- 
mand the  case  and  not  decide  it  himself. 

Serrell  v.  Donnelly,  120  0.  G.  2501. 

677.  The  parties  are  therefore  notified  that  the  testi- 
mony already  taken  will  be  used  as  a  prima  facie  case  in 
suppoj't  of  the  allegation  of  public  use,  and  that  if  any 
one  of  them  wishes  to  take  testimony  in  explanation  or 
rebuttal  he  must  so  notify  the  Office  within  20  days. 

Xiedringhaus  v.  Marquard  v.  McConnell,  121  0. 
G.  337. 

678.  A  suggestion  by  the  Examiners  in  Chief  referred 
to  the  Primary  Examiner  who  agreed. 

There  is  no  conflict  of  oi)inion,  because  the  Examiner 
previously  thought  differently,  to  warrant  a  review  by 
the  Commissioner  under  the  practice  announced  in  Snider 
V.  Bunnell,  121  O.  G.  338. 

679.  This  rule  does  not  provide  for  the  filing  of 
motions  (as  for  the  return  of  the  case  to  the  Primary 
Examiner  to  determine  a  question  of  Statutory  Bar). 
Motion  entitled  under  it  dismissed. 

Struble  v.  Young,  121  0.  G.  340. 


138  INTERLOCUTORY  MOTIONS  12(5 

680.  An  interference  will  not  be  suspended  for  the 
purpose  of  considering  the  question  of  estoppel  against 
one  party  where  dissolution  of  the  interference  would 
apparently  leave  the  wa}'  clear  to  the  allowance  of  a 
jDatent  to  another  party  who  may  not  be  the  first  in- 
ventor.   Dunbar  v.  Schellenger,  121  0.  G.  687. 

681.  Where  all  the  evidence  is  before  the  Office  upon 
which  to  base  a  final  determination  upon  priority,  such 
final  determination  should  in  general  be  reached  before 
consideration  of  ex  parte  rights  is  undertaken. 

Dunbar  v.  Schellenger,  121  0.  G.  687. 

682.  Examiners  thought  one  party  had  not  disclosed 
the  invention. 

The  interference  remanded  to  the  Primary  Fxn]iiine]-, 
to  hear  the  parties  and  furnish  his  opinion  as  to  the 
question  raised,  together  with  a  statement  of  the  reasoas 
for  his  conclusions.  The  Examiner's  opinion  placed  in 
the  interference  file,  copies  sent  to  the  parties  and  the 
case  returned  to  the  Commissioner  for  decision  upon  the 
appeal.    Kilbourn  v.  Hirner,  122  0.  G.  729. 

683.  A  consideration  of  the  affidavit  and  testimony 
referred  to  by  the  protestant  makes  it  seem  probable 
that  such  bar  does  exist.  It  is  not  necessary  to  analyze 
that  testimony  to  determine  whether  it  is  technically 
sufficient  if  true  to  prove  public  use. 

Ashton,  122  0.  G.  730. 

Duryea  &  White  v.  Rice,  Jr.,  122  0.  G.  1395. 

684.  I  see  no  reason  why  I  should  act  to  control  the 
discretion  of  the  Examiner  of  Interferences  calling  at- 
tention to  matter  under  Rule  126  or  refusing  to  call  at- 
tention under  that  rule. 

Wert  V.  Borst  &  Groscop,  122  O.  G.  2062. 
Munro  v.  Walker,  122  O.  G.  2062. 
Andrews  v.  Nilson,  123  0.  G.  1667. 

685.  The  proper  practice  when  a  case  is  referred  to 
the  Primary  Examiner  upon  suggestions  by  the  Ex- 
aminers-in-Chief  of  lack  of  right  of  a  party  to  make 
claims,  and  the  Primary  Examiner  disagrees  with  the 
conclusions  of  the  Examiners-in-Chief ,  is  to  refer  the  case 
to  the  Commissioner  for  decision. 

Durvea  &  White  v.  Rice,  123  0.  G.  2627. 


1  •>(;  INTERLOCUTORY  MOTIONS  139 

686.  Thought  that  it  would  be  an  improvement  if  the 
Examiner  of  Interferences  in  these  cases  would  make 
his  opinion  the  basis  of  a  judgment  of  priority  of  inven- 
tion iiistead  of  calling  attention  to  the  supposed  facts  un- 
der Kule  126. 

Brown  v.  Hodgkinson,  123  0.  G.  2973. 
Cites 

Podlesak  &  Podlesak  v.  Melnnernev,  120  0.  G. 

2127. 
Allen,  Commissioner  of  Pats.,  v.  The  U.  S.  of 
America  ex  rel.  George  A.  Lowrv  &  Planters 
Compress  Co.,  116  0.  G.  2253. 

687.  The  affidavits  fail  to  make  out  a  prima  facie  case 
of  public  use  of  the  invention  more  than  two  years  prior 
to  Siebert's  filing  date.  They  state  the  conclusions  of 
the  witnesses  largely  to  the  exclusion  of  the  facts  upon 
which  such  conclusions  are  based.  "Where  facts  are  given 
they  are  not  recited  with  sufficient  particularity  and  cer- 
tainty. A  portion  of  the  showing  is  also  objectionable 
as  hearsay.  The  Office  should  not  institute  a  proceeding 
that  may  uselessly  consume  the  time  and  labor  of  all 
parties  upon  such  a  showing. 

Siebert  &  Bloomberg,  124  0.  G.  628. 

688.  Petitioner  has  not  made  such  a  showing  as  would 
warrant  institution  of  public  use  proceedings  (Siebert  v. 
Bloomberg,  124  0.  G.  628.) 

Barber  v.  Wood,  127  0.  G.  1991. 

689.  A  protest  on  the  ground  of  public  use  was  once 
dismissed  because  unaccompanied  by  an  offer  to  produce 
witnesses  and  bear  expenses.  It  is  now  dismissed  because 
affidavit  set  up  conclusions  instead  of  facts.  Af)plicant 
should  i^resent  this  case  as  well  as  may  be  done  by  affi- 
davits so  as  to  give  the  opponent  an  opportunity  to 
intelligently  oppose  the  institution  of  the  proceeding  and 
the  consequent  delav. 

Booth,  128  b.  G.  1291. 

Wickers  &  Furlong  v.  McKee,  129  0.  G.  1269. 

690.  A  petition  that  a  rule  be  issued  against  an  op- 
posing 23arty  to  show  cause  why  it  should  not  be  held 
that  he  has  abandoned  his  invention,  and  that  petitioner 
be  permitted  to  offer  testimony  upon  such  question,  will 
not  be  entertained  under  the  Commissioner's  supervisory 
authority  where  the  petitioner  has  other  remedies  and  is 


140  INTERLOCUTORY  MOTIONS  ±2(j 

in  fact  pursuing  another  remedy  before  the  Examiner  of 

In  f  PT*TPT*(^T1  OPS 

(Cases  cited)  Barber  v.  Wood,  132  0.  G.  1588. 
691.  A  motion  to  take  testimony  as  to  inoperativeness 
of  opponent's  aj^iparatus,  brought  in  the  regular  course 
of  the  proceedings,  affords  petitioner  an  adequate  remedy 
without  the  necessity  of  invoking  the  supervisory  au- 
thority of  the  Commissioner,  and  should  be  determined  in 
the  first  instance  by  the  Examiner  of  Interferences. 

Lowry  &  Cowley  v.  Spoon,  122  O.  G.  2687. 

Barber  v.  Wood,  132  0.  G.  1588. 
The  question  whether  one  of  the  j)arties  to  an  inter- 
ference proceeding  is  debarred  from  receiving  a  patent  by 
reason  of  his  having  secured  a  foreign  patent  for  the  same 
invention  is  a  question  for  ex  parte  consideration  after 
the  termination  of  the  interference. 

Guenift'et,  Benoit  and  Nicault  v.  Wictorsohn,  lol 
0.  G.  255. 


iliO  INTERLOCUTORY  MOTIONS  141 

RULE  130. 

130.  Where  the  patentability  of  a  ehiiin  to  an  oppon- 
ent is  material  to  the  ri^^^ht  of  a  party  to  a  patent,  said 
party  may  urge  the  non])atentability  of  the  claim  to  his 
opponent  at  final  hearing  before  the  examiner  of  inter- 
ferences as  a  basis  for  the  decision  upon  jiriority  of  in- 
vention, and  upon  appeals  from  such  decision.  A  party 
shall  not  be  entitled  to  take  such  step,  however,  unless  he 
has  duly  presented  and  |)rosecuted  a  motion  under  Rule 
122  for  dissolution  up>on  tlie  ground  in  (juestion,  or  shows 
good  reason  why  such  a  motion  was  not  presented  and 
prosecuted. 


WHAT  MAY  BE  CONSIDERED  ON  FINAL  HEARING. 

G92.  Where  on  final  hearing  before  the  Commissioner 
an  interference  is  suspended  and  the  case  remanded  to 
the  Primary  Examiner  for  consideration  of  the  question 
of  operativeness,  this  question  will  not  be  considered 
inter  partes  but  will  be  determined  by  the  Examiner  sub- 
ject to  the  regular  course  of  appeals  in  c.r  parte  proceed- 
ings.   Archer,  57  0.  G.  696. 

693.  It  is  the  clear  duty  of  the  Office  in  such  a  case 
to  decline  to  further  consider  the  question  of  abandon- 
ment of  Y's  ai)plication  until  the  question  of  priority  of 
invention  shall  have  been  determined,  when  unquestion- 
ably a  much  fuller  light  will  have  been  shed  ui)on  the 
whole  matter. 

Young  V.  Case,  58  0.  G.  945. 

694.  In  view  of  the  obvious  irregularities  in  declaring 
the  interference,  it  is  extremely  difficult  to  render  a  deci- 
sion on  the  question  of  priority. 

The  Examiner  is  directed  to  carefully  consider  the 
question  of  patentability  of  the  issue  and  take  such  action 
as  the  case  demands. 

Mets  V.  Crane  &  Bloomfield,  58  0.  G.  947. 

695.  Where  the  Examiner  of  Interferences  refused  to 
consider  a  motion  to  strike  out  a  wife's  testimony  and  re- 
served the  question  until  final  hearing,  HELD,  on  appeal 


142  INTERLOCUTORY  MOTIONS  130 

to  the  Commissioner,  that  this  was  a  proper  subject  for 
interlocutory  action. 

Crawford  v.  Lichenstein,  61  0.  G.  1480. 

G96,  Where  an  applicant  copied  the  claims  of  a  patent 
all  the  tribunals  must  pass  upon  the  question  of  the 
right  of  applicant  to  make  the  claim. 

Reichenbach  v.  Goodwin,  63  0.  G.  311. 

697.  Priority  of  invention  cannot  be  awarded  to  an 
applicant  whose  device  is  inoperative. 

Glidden  v.  Noble,  67  0.  G.  676. 

698.  Question  of  patentability  refused  consideration 
on  final  hearing  in  view  of  the  fact  that  no  motion  was 
made  under  Eule  122. 

'Schnabel  v.  Shellaberger,  68  0.  G.  658. 

699.  AVhere  the  question  of  priority  has  been  decided 
without  the  suspension  of  an  interference  proceeding,  the 
question  of  patentability  of  a  claim  involved  in  the  in- 
terference will  be  considered  not  infer  partes  but  e.v  parte 
bv  the  Primarv  Examiner. 

Pell  V."  Pierpoint,  76  0.  G.  1573. 

700.  The  pendency  of  a  motion  to  dissolve  before  the 
Primary  Examiner  does  not  prevent  the  parties  from 
bringing  any  other  proper  motion  before  the  Examiner 
of  Interferences. 

Mechlin  v.  Horn,  Colclazer  &  Munger,  92  0.  G. 
2507-8. 
700a.  To  pass  upon  the  question  of  whether  or  not  the 
evidence  should  be  suppressed  would  require  such  a  con- 
sideration of  the  very  voluminous  record  in  this  case  as 
will  necessarily  be  given  at  the  final  hearing,  and  for  that 
reason  a  final  disposition  of  the  matter  should  be  post- 
jDoned  until  that  time. 

Talbot  V.  Monell,  99  0.  G.  2965. 
700b.  In  certain  cases  it  is  better  to  postpone  the  con- 
sideration of  questions  relating  to  the  suppression  of 
testimony  until  final  hearing.  The  present  case  is  not 
one  of  these.  The  Examiner  of  Interferences'  decision 
granting  motion  to  strike  out  affirmed. 

Brill  &  Adams  v.  Uebelacker,  99  0.  G.  2966. 

701.  Motions  requiring  the  whole  case  to  be  gone  into" 
will  be  considered  onlv  at  the  final  hearing. 

Hall  V.  Alvord,  101  0.  G.  1833. 


l;50  INTERLOCUTORY  MOTIONS  143 

701a.  It  lias  been  the  uniform  practice  not  to  suppress 
tlie  testimonv  before  final  hearing. 

Andrews  v.  Xelson,  111  0.  G.  1038. 

702.  Questions  of  patentability  raised  for  the  first 
time  on  appeal  to  the  Commissioner  refused  consideration 
and  brief  on  question  stricken  from  the  files. 

Hedlund  v.  Curtis,  114  0.  G.  544-5. 

703.  Where  the  question  is  appealed  to  the  Com- 
missioner on  the  question  of  priority,  a  motion  to  trans- 
mit the  interference  to  the  Primary  Examiner  to  consider 
the  question  of  patentability  will  not  be  granted  unless 
a  clear  and  unmistakable  error  appears  in  the  prior  de- 
cision.   Parker  v.  Lewis,  120  0.  G.  323. 

704.  The  question  of  the  right  of  a  party  to  make  .a 
claim  goes  to  the  very  foundation  of  an  interference,  for 
if  the  party  has  not  such  right  the  interference  falls.  If 
it  be  incorrectly  held  that  such  a  party  has  a  right  to 
make  the  claim  priority  may  be  awarded  to  him  and  his 
adversar}'  be  deprived  of  a  substantia]  right  in  that  he  is 
not  given  a  claim  where  he  necessarily  is  the  prior  in- 
ventor, his  adversary  never  having  made  the  invention. 
Manifestly  that  question  should  not  be  finally  determined 
by  the  Primarj-  Examiner  who  originally  declared  the 
interference.    Podlesak  v.  Podlesak  v.  Mclnnerney,  120  0. 

G.  2127. 

705.  Xo  interlocutory  appeal  on  decision  affirming 
right  to  make  claims,  but  an  opponent's  right  to  make 
claims  "may"  be  questioned  upon  appeal  from  decisions 
upon  priority  of  invention  where  a  holding  of  right  on 
the  part  of  one  party  to  make  the  claims  operates  to 
deny  a  j^atent  to  another  party  who  if  such  holding  be  in 
error  is  the  first  inventor. 

Miel  V.  Young,  121  0.  G.  1350. 

See  also  Xoble  v.  Sessions,  1210  0.  G.  1348. 

706.  The  question  of  the  right  to  make  a  claim  is  re- 
viewable, if  at  all,  with  the  final  decision  in  the  inter- 
ference and  not  upon  interlocutory  appeal. 

Zimmermann  v.  Lamboni,  121  0.  G.  2326. 

707.  I  am  of  the  opinion  that  the  question  raised  by 
this  attack  (sufficiency  of  disclosure)  is  one  properly 
considered  in  determining  the  question  of  priority  in 
those  cases  where  a  holding  that  a  party  is  entitled  to 


144  INTERLOCUTORY  MOTIONS  1  HO 

make  the  claim  in  issue  results  in  a  judgment  against  a 
party,  who,  if  he  be  the  true  inventor  and  entitled  to  a 
patent.    Kilbourn  v.  Hirner,  122  0.  G.  729. 

708.  The  consideration  of  the  ciuestion  of  patentability 
or  right  to  make  the  claims  will  not  be  considered  at  the 
final  hearing,  where  the  moving  party  is  in  no  case  en- 
titled to  receive  a  patent  on  the  subject  matter. 

Potter  V.  :\rcTntosh,  122  0.  G.  1721. 

709.  After  the  present  motion  to  dissolve  is  disposed 
of  petitioner  may  pursue  his  motion  for  an  order  permit- 
ting him  to  take  testimony  under  the  practice  announced 
in  Browne  v.  Stroud,  122  0.  G.  2687,  and  Lowrv  &  Crow- 
lev  V.  Spoon,  122  0.  G.  2687. 

Barber  v.  Wood,  127  0.  G.  1991. 

710.  The  right  of  Crebbin  to  make  the  claims  cor- 
responding to  the  issue  may  be  urged  at  the  final  hear- 
ing.   Locke  V.  Crebbin,  124  0.  G.  317. 

711.  The  right  of  McKee  to  make  the  claims  question- 
ed by  AVickers  and  Furlong  will  be  given  consideration 
as  ancillarv  to  the  question  of  priority. 

Wickers  &  Furlong  v.  McKee,  124  0.  G.  908. 
Cites,  Podlesak  &  Podlesak  v.  Mclnnernev,  120 

O.  G.  2127. 
Pohle  V.  Mclvnight,  119  0.  G.  2519. 

712.  The  Court  of  Appeals  in  the  District  of  Columbia, 
in  the  case  of  Podlesak  v.  Mclnnerney  (120  0.  G.  2127) 
held  that  the  question  of  the  right  of  a  party  to  make  a 
claim  may  be  an  ancillary  question  to  be  considered  in 
awarding  prioritv  of  invention.  In  mv  decision  in  the 
case  of  Pohle  v.  McKnight  (119  0.  G.  2519)  and  of  Kil- 
bourn V.  Hirner  (122  0.  G.  729)  certain  reasons  are  set 
forth  why  the  question  of  the  right  to  make  the  claiuis 
may  be  considered  as  a  basis  for  an  award  of  priority 
rather  than  a  dissolution  of  the  interference. 

Under  the  practice  indicated  above  it  was  held  that  one 
of  the  parties  had  no  right  to  make  the  claim  of  the  issue 
because  its  subject  matter  was  not  shown  in  the  original 
application,  , 

Emmet  v.  Fnllagar,  124  0.  G.  2179. 
Cites,  Gallager  v.  Hien,  115  0.  G.  1330  on  page 
2180. 


l:{0  INTERLOCUTORY  MOTIONS  145 

Laas  &  Sponenburg  v.  Scott,  122  ().  G.  352  on 

page  2181. 
Podlesak  v.  Mclnnernev,  120  0.  G.  2127  on  i)age 

2182. 
Pohle  V.  McKnight,  111)  0.  G.  2519  on  page  2182. 
Kilbourn  v.  Hirner,  122  0.  G.  729  on  page  2182. 
Robinson  v.  Seelinger,  116  O.  G.  1735  on  page 

2182. 

713.  Where  the  operativeness  of  an  opponent's  device 
or  his  right  to  make  the  claim  is  material  to  the  right  of 
a  party  to  a  patent,  said  party  may  urge  the  matter 
at  final  hearing  before  the  Examiner  of  Interferences  as  a 
basis  for  his  award  of  priority;  but  as  a  condition  prece- 
dent to  such  riglit,  the  party  must  first  ])resent  the  mat- 
ter upon  a  motion  for  dissolution  or  show  good  reason 
why  such  motion  was  not  made  and  prosecuted. 

Barber  v.  Wood,  127  O.  G.  1991. 

714.  Interferences  are  for  the  purpose  of  determining 
the  question  of  priority  only.  That  the  issue  is  not 
patentable  to  either  party  has  no  bearing. 

In  cases  contemplated  by  Kule  130,  however,  a  decision 
that  the  issue  is  not  patentable  to  one  party  would  nec- 
essarily result  in  a  decision  of  priority  in  favor  of  the 
other  party.    Dixon  &  Marsh  v.  Graves  &  Whitemore,  127 
0.  G.  1993. 

715.  An  award  of  priority  is  also  proper  under  Rule 
130  of  the  Rules  of  Practice  of  the  Office,  where  it  is 
shown  at  the  final  hearing  of  an  interference  that  the  ap- 
plication of  a  party  relied  upon  as  evidence  of  invention 
at  the  date  thereof  does  not  warrant  the  claim  in  issue. 

Martin  v.  Mullin,  127  0.  G.  3216. 

716.  W's  preliminary  statement  failed  to  overcome  the 
record  date  of  H.  and  W.  In  response  to  our  order  to 
show  cause  why  judgment  should  not  be  rendered  against 
him  W.  moved  to  dissolve  the  interference  on  the  ground 
that  H.  and  R.  had  no  right  to  final  hearing  on  priority 
under  Rule  130. 

This  proceeding  should  be  a  part  of  the  main  case  and 
not  a  separate  proceeding.     All  relates  to  priority. 

Hewitt  V.  Weintraub  v.  Hewitt  &  Rogers,  128  0. 
G.  1689. 


146  INTERLOCUTORY  MOTIONS  IJiO 

717.  It  is  believed  that  testimony  consisting  wholly  of 
the  opinions  of  expert  patent  lawyers  as  to  the  legal 
elTect  of  claims  should  not  be  received. 

Pym  V.  Hadaway,  129  0.  G.  480. 

718.  In  cases  122  0.  G.  2687  and  2688,  it  was  decided 
that  where  a  party  makes  a  reasonable  showing  before 
the  Examiner  of  Interferences  of  the  inoperativeness  of 
his  opponent's  device,  and  that  showing  does  not  extend 
to  his  own  structure,  he  may  be  permitted  to  take  testi- 
mony provided  that  the  proposed  testimony  is  of  a  char- 
acter to  justify  such  action.  No  reason  appears  for  mak- 
ing any  distinction  between  a  case  where  a  party  alleges 
that  his  opponent's  device  is  inoperative  and  one  where 
it  is  contended  that  the  opponent  has  no  right  to  make  the 
claim  in  issue.  Such  testimony  should  be  ijermitted  only 
under  Rule  130. 

Pym  V.  Hadaway,  129  0.  G.  480. 

719.  In  Podlesak  v.  Mclnnerney,  26  App.  D.  C.  399, 
this  Court  has  held  that  the  question  of  the  right  to 
make  a  claim  may  sometimes  be  an  ancillary  question  to 
be  considered  in  awarding  prioritv  of  invention. 

Wickers  &  Furlong  v.  McKee,  129  0.  G.  869. 

720.  After  record  judgment  of  priority  in  favor  of  0. 
and  upon  motion  by  B.  the  interference  was  reopened 
in  order  to  permit  him  to  urge  under  Eule  130  that  0. 
had  no  right  to  make  the  claims  of  the  issue. 

Becon  v.  Otis,  129  0.  G.  1267. 

721.  Eule  130  was  intended  to  cover  those  cases  where 
it  was  contended  that  one  party  had  a  right  to  make  the 
claims,  but  the  other  did  not,  and  that  therefore  the  lat- 
ter was  not  entitled  to  the  date  of  filing  of  his  application 
as  a  date  of  conception  and  constructive  reduction  to 
practice  of  the  invention  in  issue.  The  reasons  given 
must  not  be  applicable  to  both  cases. 

Pym  V.  Hadaway,  129  0.  G.  2073. 

722.  We  greatly  doubt  whether  the  affidavits  in  this 
record  presented  for  the  consideration  of  this  Court  and 
controverting  the  sufficiency  of  disclosure  found  in  the 
W.  application  in  interference  could  be  profitably  con- 
sidered by  this  Court.  That  question  should  come  be- 
fore us  upon  testimony  taken  in  the  interference  pro- 
ceeding.    (A.  D.  C.) 

Wickers  &  Furlong  v.  McKee,  124  0.  G.  908. 


130  INTERLOCUTORY  MOTION'S  147 

728.  A  motion  to  suppress  testimony  calling  for  an 
examination  of  a  large  part  of  the  record  will  be  post- 
poned to  the  final  hearing, 

Dvson  V.  Sand.  v.  Dunbar  v.  Browne,  130  0.  G. 
1690. 

724.  (See  note  to  Rule  122.) 
McNulken  v.  Bollee,  130  0.  G.  1691. 

725.  Evidence  considered  (by  Court  of  Appeals)  and 
held  to  show  that  the  application  on  which  the  patent 
was  granted  did  not,  as  originally  filed,  disclose  the  in- 
vention in  issue,  and  i)riority  thei-efore  awarded  to  the 
junior  party.    :\IcKnight  v.  Pohle,  130  0.  G.  2069. 

726.  The  sole  contention  on  this  appeal  is  that  the 
issue  is  not  patentable  to  either  party.  The  question  has 
been  before  the  Primary  Examiner  both  ex  parte  and 
infer  partes,  and  in  each  case  he  has  held  the  issue  to  be 
patentable.  Both  the  Examiner  of  Interferences  and  the 
Examiner  in  Chief  upon  appeal  on  jDriority  have  refused 
to  recommend  under  Rule  126  that  the  claims  be  rejected 
as  being  without  patentable  novelty.  Under  these  circum- 
stances the  question  i)resented  will  be  considered  only 
under  my  supervisory  authority  for  the  purpose  of  cor- 
recting a  manifest  error. 

Dixon  &  ^larsli  v.  Graves  &  Whittemore,   130 
0.  G.  2374. 

727.  It  is  evident  that  what  Rule  130  requires  is  that 
the  question  of  the  patentability  of  the  claims  to  the 
other  party  shall  have  been  duly  presented  and  prosecuted 
before  the  Primary  Examiner,  and  it  is  therefore  im- 
material whether  this  was  done  on  a  motion  to  dissolve 
or  on  a  motion  to  amend. 

Josleyn  v.  Hulse,  132  0.  G.  844. 

728.  A  decision  of  the  Examiner  of  Interferences  re- 
fusing to  expunge  testimony  will  only  be  reviewed  at  the 
final  hearing. 

Royce  v.  Kempshall,  119  O.  G.  338. 
Greene,    Tweed    &    Co.  v.    Manufacturers'  Belt 
Hook  Co.,  132  0.  G.  680. 

729.  The  Examiner  of  Interferences  has  jurisdiction 
to  decide  at  final  hearing  the  question  raised  upon  this 
motion,  namely,  whether  "mixed  paints"  and  "ready 
mixed  jDaints"  are  goods  of  different  descrii3tive  prop- 


148  INTERLOCUTORY  MOTIONS  l;iO 

erties,  for  the  trade-mark  statute  provides  for  the  deter- 
iiiiiiatioii  of  the  question  of  the  "right  of  registration  to 
such  trade-mark."  The  trade-mark  statute  gives  much 
larger  jurisdiction  than  the  patent  statute,  which  merely 
provides  for  the  determination  of  the  question  of  j^riority. 
Lewis  »5v:  Bros.  Co.  v.  Phoenix  Paint  &  V'arnish 
Co.,  131  O.  G.  361. 

730.  Rule  130  does  not  confer  upon  a  party  the  ab- 
solute right  to  contest  his  opponent's  right  to  a  claim, 
but  allows  him  to  do  so  only  when  the  objections  urged 
against  his  opponents  to  make  the  claim  do  not  apply 
With  equal  force  to  his  own  case. 

Pym  V.  Hadaway,  131  0.  G.  692. 

Anderson  &  Dyer  v.  Lowry,  89  0.  G.  1861. 

Bechman  v.  Southgate,  127  0.  G.  1251. 

Bechman  v.  Wood,  89  O.  G.  480. 

Briggs  v.  Conley,  104  0.  G.  1119. 

Cory  v.  Gibhart  &  Martin,  Jr.,  v.  Blakev,  115  0. 

G.  1328. 
Denton  v.  Parker,  98  0.  G.  415. 
Goss  V.  Scott,  96  0.  G.  844. 
Gallv  V.  Burton,  120  0.  G.  325. 
Home  V.  Somers  &  Co.,  129  0.  G.  1609. 
Jenner  v.  Dickson  v.  Thibodeau,  116  0.  G.  1181. 
Kilbourn  v.  Hirner,  128  0.  G.  1689. 
Kempshall  v.  Sieberling,  110  0.  G.  1427. 
Locke  v.  Crebbin,  124  0.  G.  317. 
McGill  V.  Adams,  119  0.  G.  1259. 
Miel  V.  Yough,  121  0.  G.  1350. 
Read  v.  Scott,  101  0.  G.  449. 
Ruische  v.  Sandherr,  105  0.  G.  1780. 
Seeberger  v.  Dodge,  113  0.  G.  1415. 
Shallenberger  v.  Andrews,  1902  C.  D.  246. 
Sobey  v.  Holsclaw,  119  0.  G.  1922. 
Talbot  V.  Morrell,  99  0.  G.  2955. 
Weintraub  v.  Hewitt,  124  0.  G.  2534. 

731.  Rule  in  accordance  with  the  holding  of  the  Court 
of  Appeals  in  the  decision  in  Podlesak  and  Podlesak  v. 
Mclnnernev  (120  0.  G.  2127)  and  in  Kilbourn  v.  Hirner 
and  in  Wickers  and  Furlong  (129  0.  G.  869). 

Hopkins  v.  Newman,  131  0.  G.  1161. 

732.  The  question  of  the  patentability  of  the  issue 
will  not  be  considered  on  an  appeal  on  priority  except 


J  30  INTERLOCUTORY  MOTIONS  149 

under  such  special  circumstances  as  would  warrant  the 
exercise  of  the  supervisory  authority  of  the  Commis- 
sioner.   Hess  V.  Jorrissen  v.  Felbel,  131  0.  G.  1419. 

733.  Wliere  testimony  must  be  considered  in  deter- 
mining a  motion  to  amend  a  pi-eliminary  statement,  it  is 
within  the  discretion  of  the  Examiner  to  consider  such 
testimony  for  the  purpose  of  deciding  the  motion  prior 
to  final  hearing.  When  in  his  oi)inion  the  conditions  of 
the  case  justify  an  early  adjudication  of  the  questions 
raised,  his  decision  should  not  be  delayed. 

Smith  V.  Ingram,  131  0.  G.  2420. 

734.  Where  the  defeated  party  alleges  public  use, 
HELD  that  the  matter  will  not  be  considered  until  the 
decision  on  priority  becomes  final. 

Doble  v.  Henry,  118  U.  G.  2249. 

734a.     If  a  witness  refuses  to  answer  a  material  ques- 
tion and  no  application  is  made  to  the  U.  S.  Court,  testi- 
mony will  not  be  stricken  out  except  preparatory  to  final 
hearing.    Independent   Baking   Powder   Co   v.   Fidelity 
Mfg.  Co.,  94  0.  G.  223. 

735.  Where  the  defeated  party  alleges  public  use, 
HELD  that  the  matter  will  not  be  considered  until  the 
decision  on  priority  becomes  final. 

Doble  y.  Henry,  118  0.  G.  2249. 

736.  The  fact  that  on  appeal  from  a  decision  on  a 
motion  to  dissolve  the  Examiners-in-Chief  have  held  that 
a  party  has  a  right  to  make  the  claims  does  not  prevent 
the  question  being  raised  before  the  Examiner  of  Inter- 
ferences at  final  hearing  under  Eule  130. 

O'Brien  v.  Gale  v.  Limmer  v.  Calderwood,  133 
0.  G.  514. 

736a.     A  motion  to  suppress  testimony  decided  at  final 
hearing,  may  not  be  appealed  separately,  but  may  be  con- 
sidered by  the  appellate  tribunal  on  appeal  upon  the  main 
question.     Dvson  v.  Sand  v.  Dunbar  v.  Browne,  133  0.  G. 
1679. 


150  INTERLOCUTORY  MOTIONS  153 

RULE  153. 

153.  In  contested  cases  reasonable  notice  of  all  mo- 
tions, and  copies  of  motion  papers  and  affidavits,  must  be 
served,  as  provided  in  Rule  154  (2).  Proof  of  such  ser- 
vice must  be  made  before  the  motion  will  be  entertained 
by  the  Office.  Motions  will  not  be  heard  in  the  absence 
of  either  party  except  upon  default  after  due  notice. 
Motions  will  be  heard  in  the  first  instance  by  the  officer 
or  tribunal  before  whom  the  particular  case  may  be  pend- 
ing. In  original  hearings  on  motions  the  moving  parties 
shall  have  the  right  to  make  the  opening  and  closing 
arguments.  In  contested  cases  the  practice  on  points  to 
which  the  rules  shall  not  be  applicable  will  conform,  as 
near  as  possible,  to  that  of  the  United  States  courts  in 
equity  proceedings. 


NOTICE. 


737.  A  party  cannot  move  to  reform  the  declaration 
of  interference  without  notice. 

Grav  V.  Bell,  1878  C.  D.  133, 15  0.  G.  133. 
Bell  V.  Gray,  15  0.  G.  776,  1879  C.  D.  42. 

738.  A  concession  of  priority  excluded  as  evidence  by 
the  Examiner  of  Interferences  for  want  of  notice. 

Tucker  v.  Kahler,  1879  C.  D.  71, 15  0.  G.  966. 

739.  The  usual  rule  is  to  exclude  the  first  or  last  day 
of  the  notice,  when  not  personallv  served. 

Hoag  V.  Abbott,  1879  C.  D.,  15  0.  G.  471. 

740.  If  a  party  would  be  compelled  to  travel  night 
and  day  the  notice  is  not  reasonable. 

Hoag  V.  Abbott,  1879  C.  D.  3,  15  0.  G.  471. 

741.  As  to  the  failure  to  give  the  name  of  a  witness. 
See  Kenerson  v.  Brown  &  Brown,  779  C.  D.  249, 

16  0.  G.  857. 
Masury,  73  C.  D.  110. 

742.  A  motion  based  upon  the  same  state  of  facts  and 
reasons  as  a  previous  one  should  be  refused  on  the 
ground  that  the  matter  is  res  adjudicata. 

Little  V.  Little,  Pillard  &  Sargent,  1876  C.  D.  207, 

15  0.  G.  543. 
Banks  v.  Snediker,  1880  C.  D.  95,  17  0.  G.  508. 


153  INTERLOCUTORY  MOTIO>^S  151 

74.'},  The  aj)i)eai-ance  of  a  party  in  a  case  and  the 
submission  of  arguments  on  the  merits  of  the  disputed 
points,  is  a  virtual  waiver  of  the  riglit  of  notice. 

Keller  c^    Olmsdalil    v.  Polder,  1876  C.  D.  2-K;, 
10  ().  (J.  944. 

744.  A  motion  with  notice  is  only  necessary,  when  a 
demand  is  made  whicli  may  be  refused.  When  a  motion 
is  made  whicli  must  be  granted,  it  is  not  a  motion  in  the 
sense  of  this  rule. 

Booth  V.  Lyman,  1880  C.  D.  170,  17  O.  G.  393. 

745.  Motions  in  which  no  i)roof  of  service  u))on  tlie 
opiiosite  partv  is  made  will  not  be  entertained. 

Bechman  v.  Jolmson,  1889  C.  D,  184;  48  0.  G.  GJ:). 
C.  r.  97  ().  G.  2531 ;  92  ().  G.  1236;  1890  C.  D.  125. 

746.  A  i^etition  that  a  certain  ai)plication  be  ""a  ith- 
drawii  from  issue,  and  a  rule  made  that  cause  be  shown 
wliv  the  order  should  not  be  made  permanent. 

Spielman,  1892  C.  I).  1;  58  0,  G.  141, 

747.  It  is  not  the  practice  of  the  OflSce  to  recjuii-e  a 
party  to  serve  upon  his  opponent  copies  of  all  office  rec- 
ords referred  to  in  a  motion  made  by  him. 

Bundv  V.  Rumbacker,  92  ()."  G,  2002,  1900  C.  D. 
143. 

748.  The  notice  of  certain  named  witnesses  and,  per- 
haps, others,  does  not  warrant  the  taking  of  the  testi- 
mony of  any  witnesses  than  those  named,  at  least  under 
the  circumstances  of  the  case.  A  notice  one  day  that  the 
testimony  will  be  taken  the  next  day  is  not  sufficient 
where  attorneys  are  in  a  distant  city  and  only  represent- 
ed bv  an  associate  attorney. 

Potter  V.  Ochs,  95  0.  G.  1049,  1901  C.  D.  39. 

749.  All  parties  must  be  notified. 

Grand  v.  Abbott  v.  Grand  &  McGraw,  103  0.  G. 
662. 

750.  Notice  of  new  matter  in  cases  transmitted  under 
Rule  126.     Greenawalt  v.  Mark,  103  0.  G.  1913. 

751.  It  should  be  noted  that  both  applications  here 
involved  are  owned  by  the  same  party,  and  that  the  same 
attorney  appears  for  both  parties;  under  such  circum- 
stances the  Office  should  be  ^particularly  on  its  guard  to 
prevent  unreasonable  delays. 


152  INTERLOCUTORY  MOTIONS  153 

Unreasonable  delays  in  the  prosecution  of  interferences 
will  not  be  ])erinitted  merely  because  the  parties  agree  to 
the  delay.     Sponsel  v.  Darling,  105  0.  G.  498. 

752.  An  affidavit  filed  after  the  hearing  relating  to 
the  merits  stricken  from  the  files,  as  these  rules  con- 
template that  a  party  shall  be  given  notice  of  his  oppon- 
ent's case  before  the  hearing. 

Miller,  105  0.  G.  1532-33. 

753.  Notice  served  June  16,  at  12  o'clock  for  taking 
testimony  in  Erie,  Pa.,  10  A.  M.  June  18,  is  insufficient 
even  if  it  contained  names  of  witnesses. 

Tripp  V.  Wolff  V.  Ames,  108  0.  G.  563. 

754.  A  notice  that  would  necessitate  travel  on  Sunday 
is  insufficient.  Counsel  must  be  given  time  to  prepare  for 
a  journey.    Goodfellow  v.  Jolly,  111  0.  G.  1940. 

755.  ISTew  grounds  for  dissolution  not  of  record  in 
either  application  and  not  included  in  the  motion  must 
be  served  upon  the  opposing  party  at  least  5  days  before 
the  hearing.  If  notice  of  the  new  grounds  is  not  served 
and  service  is  not  waived,  these  grounds  will  not  be  con- 
sidered bv  the  Primarv  Examiner  in  deciding  the  motion. 
(Wells  v]  Parker,  90 'O.  G.  1947;  Summers  v.  Hart,  98 
0.  G.  2585;  Kurz  v.  Jackson  v.  Pierce,  2586;  Whitlock  v. 
Hudson  V.  Scott,  99  0.  G.  1385.) 

In  cases  where  due  service  of  the  new  grounds 
could  not  have  been  rendered,  a  postponement  of  the 
hearing  should  be  requested,  and  the  request  being  ac- 
companied bv  a  statement  of  facts. 

Young  V.  Eick,  113  0.  G.  547. 

Fowler,  113  0.  G.  549. 

756.  It  seems  service  'of  joapers  on  Saturday  afternoon 
in  the  District  of  Columbia  is  legal. 

Goodfellow  V.  Jolly,  115  0.  G.  1064. 

757.  A  notice  given  at  10  o'clock  that  testimony  was 
to  be  taken  at  2,  where  all  parties  attended  and  the  testi- 
mony was  brief,  testimony  not  stricken  out  notwith- 
s'tanding  moving  partv  refused  to  cross-examine. 

Roberts  v.  Webster,  115  0.  G.  2135. 

758.  A  petition  to  suspend  an  interference  and  declare 
a  new  one  will  not  be  considered  when  the  opposing  party 
was  not  notified. 

Hansen,  117  0.  G.  2632. 


153  INTERLOCUTGRV  MOTIONS  153 

751).  Tlie  time  of  liearing  is  a  matter  resting  in  the 
discretion  of  tlie  tribunal  before  whom  the  case  is  pend- 
ing.   Cazin  v.  Von  Welsbach,  119  0.  G.  550. 

760.  It  is  the  well  settled  practice  of  this  Office,  as  an- 
nounced in  Klotsker  &  Goesel  v.  Dodson,  109  0.  G.  1336, 
C.  D.  1904,  100,  and  other  decisions,  that  an  appeal  filed 
after  the  expiration  of  the  limit  of  appeal  will  not  be 
entertained  except  upon  a  verified'  showing  why  it  was 
not  presented  in  proper  time. 

Thuiien  v.  Young  &  Townsend,  120  0.  G.  904. 

761.  The  petition  must  be  denied  on  the  merits,  but  it 
is  to  be  noted  also  that  copies  were  not  served  upon  the 
opposing  parties  and  that  therefore  it  is  informal. 

Kolb  V.  Hemmingwa.y  v.  Curtis,  122  0.  G.  1397. 

762.  Where  affidavits  are  filed  by  any  of  the  parties 
which  are  not  in  answer  to  affidavits  filed  by  opponents, 
they  must  ordinarily  be  served  upon  the  opponents  at 
least  five  days  before  the  hearing.  Affidavits  in  rebuttal 
may  then  be  filed  but  should  be  served  before  the  liearing. 

Browne  v.  Stroud,  122  0.  G.  2688. 

763.  The  signature  to  a  notice  is  sufficient  if  the  party 
notified  understands  from  the  signature  from  whom  or 
in  whose  interest  the  notice  is  given. 

Hevne,  Havwood  &  McCarthy  v.  De  Vilbliss,  Jr., 

125  0.  G.^669. 
Adams-Randall,  125  0.  G.  1700. 

764.  A  motion  to  amend  declaration  in  a  trade-mark 
case  so  as  to  insert  a  statement  of  ten  years'  exclusive 
use,  which  statement  had  been  previously  withdrawn  in 
view  of  testimony  in  an  interference  case,  refused. 

Keiiyon,'l25  0.  G.  1702. 

765.  The  rule  provides  that  reasonable  notice  of  all 
motions  must  be  given  and  that  a  motion  will  not  be  en- 
tertained in  absence  of  proof  of  service.  The  same  reason 
exists  for  requiring  notice  of  the  renewal  of  a  motion  as 
of  the  motion  itself,  and  the  mere  request  at  the  final  hear- 
ing is  not  such  notice. 

Dvson  V.  Sand  v.  Dunbar  v.  Browne,  133  0.  G. 
"1679. 


INDEX. 


Where    capital    letters    are    used    the    references    are    to    headings. 
The  numerals  refer  to  the  numbers  of  the  notes. 

.\BAXDOX.ME\T     (SHIFTING    BIRDEX    OF    PROOF,    ETC.)— 423  : 

483   :   120   :   471   :   514  to  547. 
See  "SHIFTING  BURDEN  OF  PROOF." 
Acquiescence — 132 — See    "Estoppel." 
Admission — See    "Estopi)el." 

AFFIDAVITS— EVIDEXCE— See   "EVIDENCE." 
Affidavit  under  Rule  75—101    :    539. 

AFFIRMING  PATENTABILITY— RULE  124—548  to  558. 
Alternative— 254  :  264  :  272. 

AMENDMENTS— 559    and    560  :  382  :  30  :  147  :  179. 
Appeal  Fee — 574  :  575./ 
APPEAL— GROUNDS  OF— 418  to   427. 
APPEALS    TO    THE    BOARD    OR    TO    THE    CO.MMISSIONER— See 

"BOARD." 
APPEAL— WHEN  TAKEN— 597   to   603. 
Appeal— Who  may  take— 576  :  578  :  579  :  580  :  581  :  583  :  585  :  586  : 

611  :  512. 
APPLICANT  AND  PATENTEE— See  "PATENTEE"— 5   :   20  :   53   :   54. 
ASSIGNMENT   OF  REASONS  ON  APPEAL— 561  to  588. 
Authentication  of  Officer — 337. 
BAR— STATUTORY  SUGGESTED— 612  to  691a.     See  under  "JURIS- 

DICTIOX." 
BOARD— DECISIONS    OF   THE— 609   to   611. 
BOARD  OR  TO  THE  COMMISSIONER— APPEALS  TO  THE— 604  to 

608.     See  "GROUNDS  OF  APPEAL"— 29:  507  :   664. 
BURDEN     OF     PROOF— SHIFTING — 429     to     452—392    :    528.        See 

"SHIFTING  BURDEN  OF  PROOF." 
Caveator— 143  :  433  :  44. 

CLAIM— RIGHT  TO  MAKE— 529  to  547— See  under  Rule  97  :  561  :  197. 

Claims — Meaning    of — 168. 

Cloud  on  Patent— 92  :  670. 

COMMISSIONER— APPEALS  TO  THE— See  "BOARD." 

COMMISSIONER— DECISIONS    OF— 590    to    596. 

CONSTRUCTION  AND  EFFECT  OF  CLAIMS— 14  to  21  :  468. 

Court   of   Appeals— 419  :  503  :  534. 

DECISION  OF  THE  COMMISSIONER— 590  to  596  :   676  :   686. 

Decisions— 220  :  221  :  410  :  684  :  690i^. 

Default— 120. 


156  INDEX. 

DELAY  IN  BRINGING  MOTION— EXCUSE  FOR  SECOND  MOTION— 

340  to   392  :  513b. 
DELAY— EXCUSE  FOR— 597  to  603  :  751. 
Designs — 638%  :  663. 
Disclosure — 537. 

DISSOLUTION— GROUNDS  FOR— 180  to  197. 
Division— 90  :  133  :  111. 
Error — Clerical — 51  :  148. 
Estoppel— 144  :  661  :  671  :  680  :  192  :  194  :  217  :  103  :  132  :  531  :  591  : 

698. 
EVIDENCE— AFFIDAVITS— TESTIMONY— 307   to   339    :    643    :    654 

657  :  677  :  683  :  687  :  709  :  717  :  723  :  724  :  728  :  733  :  734a 

775  :  251  :  269  :  270  :  271  :  281  :  282  :  286  :  294  :  301  :  302  :  416 

440  :  449  :  460  :  486  :  509  :  511  :  524  :  179a  :  527  :  614  :  616  :  632 

647  :  663  :   695  :   713  :   736a  :   752. 
EXAMINER'S  ACTION— 393  to  417   :   590   :   684. 
EXCUSE  FOR  SECOND  MOTION— 340  to  392   :  306. 
EXPEDITING  PROCEEDINGS— EXAMINER'S  ACTION— TIME  LIMIT 

—393  to  417. 
Expert— 319  :  322  :  330  :  331  :  717. 

EXTEND  TIME — PETITION  TO— 299  to  306  and  597  to  603. 
FINAL  HEARING— RULE  130—692  to  736  :  87  :  117  :  134  :  568  :  672  : 

428  :  447  :  452  :  518  :  179a  :  630  :  667  :  765. 
Final  Rejection — 559. 
Foreign  Application — 444. 
FORMALITIES— 576  to  603  :  93  :  679. 
FORM  OF  MOTION— 209  to  275. 

GENERAL  POLICY  AND  MEANING  OF  RULE  122—79  to  93   :   139. 
GROUNDS  OF  APPEAL— 418  to  427. 
GROUNDS  FOR  DISSOLUTION— 180  to  197. 
HISTORY— SEE  INTRODUCTION- 
RULE  109—146. 
RULE    122—77    and    78. 
HISTORY  AND  SUBJECT  MATTER— RULE  124—495  to  513b. 
History  and  Subject  Matter— Rule  126—615  :  617  :  622  :  629  :  484  :   689 
INSERTION  OF  CLAIMS— RULE   109—62   to  76. 
Intervening   Rights — 332. 

ISSUE  AND  NOTICES— RULE  97—32  to  61   :   666. 
Joint  Inventors— 99   :   114   :   130   :   135   :   620   :   622   :   623   :   176   :   180  ; 
182  ;   480  ;   481   ;  182. 

Judicial  Notice — 635. 
JURISDICTION— 466  to  494  :   639  :   300  :   26  :   67  :  68. 
Limit  of  Appeal — 650. 
Meaning  of   Rule    122—79   to   93. 
Meaning  of  Rule  96—1  to  6. 
Moot   Question— 563  :  670. 


INDEX.  157 

MOTIONS— SUBJECT    MATTER    OF— 94    to    197. 

FORM  OF— 209  to  275. 

TRANSMISSION  OF— 276  to  297. 

DELAY  IN  BRINGING- 340  to  392. 

EXCUSE  FOR  SECOND— 340  to  392. 
Moving  Party— 197  :  258. 

NEGLECT  AND  REFUSAL  TO  MAKE  CLAIM  SUGGESTED  UNDER 
RULE  96. 

TIME    LIMIT— 22   to   31a. 
New  Claims  (R.  109)— 2  :  138. 

New  Matter— 122  :  124  :  132  :  134  :  5  :  7  :  8  :  9  :  64  :  94  ;  103  :  542  : 
750. 

NOTICE— 737  to  765  :  105  :  113  :  644  :  348. 

NOTICES— ISSUE  AND— RULE  97. 

Novelty— 613  :  614  :  104  :  121. 

Oath— 128  :  162  :  163  :  178  :  189  :    191    :    297. 

Operativeness- 105  :  110  :  119  :  630  :  691  :  692  :  697  :  713  :  718  ;  271  : 

312   ;  317  :   318  :  320  :   328  ':  330  :   331   :   336  :   383   :   534. 
Originality— 640  :  177  :  49  :  166. 

PATENTABILITY— AFFIRMING,  ETC.— 548  to  558   :   653   :   18   :   468   : 
470  :  474  :  513a. 

PATENTEE  APPLICANT— 198  to  208   :   5  :   20   :   43   :   145   :   53   :   54   : 

670  :   671. 
PETITION  TO  EXTEND  TIME— 299  to  306. 
Preliminary  Statement— 83  :  144a  :  176  :  621. 
PROCEEDINGS— EXPEDITING— 393  to  417. 
PROOF— SHIFTING    BURDEN    OF— See     'SHIFTING     BURDEN     OF 

PROOF." 
Public  Use— 112  :  123  :  735  :  181  :  198  :  334  :  338  :  473  :  476  :  166  : 

176  :  475. 

See  notes  under  "STATUTORY  BAR  SUGGESTED." 
REASONS— ASSIGNMENT   OF— 561   to  588. 
Reasons  given  by  the  Examiner — 584  :   596. 
Record— 107  :  113  :  136  :  436  :  179a  :    747. 
Record  Date — 115. 

Record— Judgment    on    the— 167  :  171  :  216  :  384  :  385  :    512. 
References— 268  :  443  :  57. 

REHEARINGS— 589  to  596   :   414    :   454    :   462   :    489   :   491   :    720. 
Reissues — 170  :  434. 

Res  .'Icijudicata—lQl  :  195  :  387  :  530  :  85  :  513  :  742. 
RIGHT  TO  MAKE  THE  CLAIM— 529  to  547  :  720. 
Revised  Statutes — 495  :  500  :  513c. 
Sale — 473. 
SECOND    MOTION— EXCUSE    FOR— See    "EXCUSE    FOR     SECOND 

MOTION." 


158  INDEX. 

SHIFTING     BURDEN      OF     PROOF— 429   to   452— (Rule    124)    514    to 

547  :  164  :  490. 
Sole — See    "Joint." 

Specific  Claim— 90   :    133  :   65   :   71   :   156. 
STATUTORY  BAR— 612  to  691a   :    127   :   508.       See  "Public  Use"  and 

"ABANDONMENT." 
STAY  OF  PROCEEDINGS— 453  to  465  :  71  :  700. 
SUBJECT    MATTER    OF    MOTION— 94    to    197. 
SUBJECT  MATTER  OF  MOTION  AND  HISTORY  OF  RULE  124—495 

to  547  :   591  :  599. 
SUGGESTION  OF  CLAIM— 7  to  13    :    102    :    126   :    142. 
Supervisory    Power    of    Commissioner— 556  :  582  :  587  :  602  :  642  :  659: 

690  :  691  :  703  :  726  :  253  :  291  :  501  :  513a  :  532  :  536  :  547. 
TIME   LIMIT— 393    to   417   and   22   to   31. 
TIME  WHEN  APPEAL  TAKEN— EXCUSE  FOR  DELAY— PETITION 

TO  EXTEND  TIME— 597  to  603. 
Trade  Mark— 106  :-649  :  668  :  729  :  764  :  173  :  196  :  269  :  327  :  427  : 

549. 
TRANSMISSION   OF  MOTION— 276  to  297   :    197   :    381    :    100   :    114    : 

149.:  175  :  670. 
WHAT   MAY  BE  CONSIDERED  AT  FINAL  HEARING— 692  to  736— 

Rule  130. 


EXPERT  TESTIMONY. 


It  seems  to  mo  that  the  subject  of  expert  testimony  in 
Patent  Cases  is  one  that  may  profitably  be  given  special 
attention.  I  refer  to  the  testimony  of  the  expert  in  the 
general  sense,  as  distinguished  from  the  specialist  in 
particuhn-  lines.  While  the  work  is  laborious  and  in- 
volves much  of  detail,  still  one  nuiy  often  work  for 
those  capable  of  appreciating  the  quality  of  his  work. 

T  have  had  very  unusual  op))ortunities  for  observing 
and  applying  scientific  and  engineering  principles  in 
practice,  having  generally  practically  complete  charge 
of  experiments,  relating  to  engineering,  electricity  and 
chemistry,  for  periods  covering  a  number  of  years.  I 
keep  up  a  small  engineering  and  scientific  library,  which 
I  am  able  to  use  with  facility. 

I  believe  I  can  make  this  si)ecial  experience  of  use  to 
others,  and  that  special  care  and  skill  as  an  expert  will 
be  appreciated.  In  this  connection  I  value  my  experience 
as  a  teacher  in  trying  to  present  scientific  and  practical 
subjects  to  men  not  then  familiar  and  ready  with  the 
language  of  the  books,  as  well  as  my  considerable  exper- 
ience in  the  legal  application  of  such  principles. 

The  necessity  of  an  expert  is  generally  recognized.  I 
suppose  there  was  never  yet  a  case  presented  that  was 
not  a  subject  of  more  or  less  regret  in  the  retrospect. 
This  regret  will  surely  be  less  if  the  case  is  carefully  pre- 
sented from  the  witness-stand  in  the  first  instance.  If 
the  burden  of  the  details  is  assumed  by  the  witness,  a 
truer  perspective  may  be  presented  in  the  brief,  besides 
the  Courts  are  apt  to  require  that  the  points  should  bo 
presented  by  a  witness  that  may  be  cross-examined. 


160  EXPERT  TESTIMONY. 

The  following  are  a  few  dicta  of  the  courts  that  may  be 
interesting: 

"Were  the  patent  taken  bodily  from  "Holy  Writ"  no  more  antagon- 
istic dogmas  and  warring  theories  could  be  deduced  therefrom."  Brace- 
well  V.  Passaic  Print  Works,  107  F.  R.  467. 

"The  explanation  given  by  both  parties  seems  to  me  purely  con- 
jectural. The  little  understood  operation  of  the  electric  current  can- 
not be  reduced  to  formulae  by  the  dicta  of  the  Court,  which  must 
needs  lag  where  experts  run."  Queen  &  Co.  v.  R.  Friedlander  &  Co., 
149  F.  R.  774. 

"Expert  testimony  is  sometimes  valuable,  and  frequently  interest- 
ing, but  seldom  controlling — never  when  directed  to  matters  capable 
of  ocular  demonstration,  unscientific  matters."  Farmers'  Mfg.  Co.  v. 
Sprinks  Mfg.  Co.,  119  F.  R.  597. 

"Even  were  it  possible  to  do  so  it  is  surely  unnecessary  to  follow 
all  the  excursions  of  the  experts  into  the  occult  realms  of  electro- 
chemical science.  Some  of  these  trails  seem  to  vanish  into  thin  air, 
others  are  lost  in  a  desert  of  technicalities,  and  of  others  still  it  is  true 
that  he  who  attempts  to  travel  them  is  quite  likely  to  find  himself 
wandering  aimlessly  "through  caverns  measureless  to  man.'  "  Electric 
Smelting  &  Aluminum  Co.  v.  Pittsburg  Reduction  Co.,  125  F.  R.  926-938. 

"Progress  in  nearly  every  field  of  mechanical  activity  is  like  the 
advance  of  the  tide — the  last  high  mark  having  been  attained,  not  by 
a  single  thought  thrown  far  in  advance  of  the  flood,  but  by  the  column 
of  thought  that  the  weight  of  the  flood  projects.  Where  one  inventive 
mind  has  run  far  out,  marking  a  distinct  field  to  be  thereafter  covered, 
it  is  not  difficult  for  the  courts  to  set  the  stakes  that  give  boundary  to 
the  advance.  But  when  the  advance  is  but  an  item  of  a  similar 
advance,  all  along  the  line,  care  must  be  taken  that  the  boundaries 
given  do  not  include  up  and  down  the  line,  every  character  of  mechan- 
ism that  thereafter  may  bring  about  similar  results."  Motsinger 
Device  Mfg.  Co.  v.  Hendricks  Novelty  Co.,  149  F.  R.  995  (C.  C.  A.) 

"And  often  machines  which  are  alleged  to  be  infringements  are 
so  unlike  in  their  apparent  construction  and  appearance  that  it  would 
seem  almost  preposterous  to  call  them  the  same  machines,  and  yet 
when  tested  by  men  who  understand  the  particular  art  to  which  they 
relate,  are  found  to  be  mere  changes  of  form."  Howes  v.  W'ashburne 
&  Washburne,  5  O.  G.  491. 

"A  thorough  understanding  of  the  purposes  which  the  inventor 
sought  to  accomi)lish,  and  the  principles  applicable  thereto,  in  the 
absence  of  a  thorough  explanation  by  experts  of  both  practical  and 
scientific  attainments  in  the  art,  requires  a  mastery  of  the  particular 
science  to  which  the  patent  in  suit  relates — the  expert  testimony  on 
either  side  proceeds  too  much  on  the  assumption  that  the  court  has 
special  knowledge  which  it  would  not  be  justified  in  making  use  of, 
even  if  it  thought  itself  possessed  of  it."  Bradford  v.  Belknap  Motor  Co., 
105  F.  R.  64. 

"(The  Judge  referred  to  facts  within  his  own  knowledge  but  not 
of  record.  The  Appellate  Court  say:)  'That  he  freely  stated  the  facts 
he  had  in  mind  tends  no  more  to  invalidate  or  impeach  his  decree  than 
the  fact  that  he  had  this  knowledge.  Extended  experience  in  the  affairs 
of  life,  does  not  disqualify  a  .Judge  who  does  not  seek  to  use  it  un- 
fairly.' "     Thompson  Scenic  Ry.  v.  Chestnut  Hill,  etc.,   127  F.  R.  703. 


EXPERT  TESTIMONY.  161 

"If  it  had  not  been  for  the  knowledge  acquired  by  the  writer  in 
previous  litigations  concerning  similar  devices,  it  would  have  been 
impracticable  on  such  hearing  to  satisfactorily  determine  the  bearing 
of  the  prior  art  on  the  invention  in  suit."  Snow  v.  Sargent,  106  F.  R. 
231. 

"At  the  hearing  we  gathered  an  apprehension  of  the  conclusions 
which  we  must  reach.  Our  subsequent  investigations  have  not  changed 
that  apprehension;  and,  although  it  has  increased  our  doubts  with 
reference  thereto,  yet  we  are  satisfied  that  they  would  not  be  re- 
moved by  further  consideration  of  the  case,  and  that  the  interest  of 
the  parties  will  be  better  advanced  by  a  disposition  of  the  suit  which 
will  enable  an  appellate  tribunal  seasonably  to  review  it  rather  than 
by  holding  it  longer  under  advisement."  Bradford  v.  Belknap  Motor 
Co.,  105  F.  R.  64. 

"It  Is  a  matter  of  historical  curiosity,  as  illustrating  the  mysterious 
working  of  the  Official  Mind,  that  the  United  States  Patent  Office 
refused  to  grant  a  patent  to  Mr.  A.  Bernstein,  in  1883,  for  the  employ- 
ment of  transformers  intended  to  lower  pressure  and  increase  current, 
and  yet  the  same  office  granted  a  patent  to  Gualard  and  Gibbs,  in 
1886,  for  the  very  same  thing.  The  application  was  rejected  by  the 
Officials  of  the  United  States  Patent  Office  on  the  ground  that  appli- 
cant should  demonstrate  more  clearly  to  the  office  the  possibility  of 
producing  quantity  currents  from  intensity  currents  by  means  of  an 
induction  coil;  it  is  not  quite  apparent  how  applicant  in  any  case  can 
get  more  quantity  from  a  secondary  coil  than  he  has  in  his  primary. 

"Will  any  say,  after  this,  and  having  regard  to  Henry's  experi- 
ments half  a  century  before,  that  official  wisdom  is  to  be  trusted  in 
the  matter  of  granting  or  refusing  patents."  Prof.  A.  J.  Fleming,  'The 
Transformer,'    Vol.  2,  pp.  81-82. 

"In  regard  to  the  differences  between  the  claims  under  consider- 
ation in  the  domestic  and  British  patents,  we  are  referred  by  the  com- 
plainant in  lump  to  eight  printed  pages  of  the  testimony  of  its  expert 
witness  Bentley,  without  any  attempt  on  its  part  to  analyze  that 
evidence.  We,  of  course,  decline  to  analyze  it  ourselves,  pointing  to 
our  rules  which  require  this  to  be  done  by  the  complainant  itself, 
with  proper  specific  references  as  therein  stated."  Thompson-Houston 
Electric  Co.  v.  M'Lean,  153  F.  R.  887. 

I  shall  be  giad  to  assist  on  the  brief  or  with  reference 
to  the  examination  of  specialists. 


PRESS  NOTICES. 


The  following  notices  are  such  as  I  have  handy  relat- 
ing to  matter  published  under  the  head  of  '*Gas  Engine 
Design,"  shortly  after  leaving  the  shop,  and  embodying 
some  of  the  results  of  my  experience,  study  and  observa- 
tion while  so  employed: 

Prof.   Picolet  kindly  writes: 

"I  am  pleased  to  note  that  the  very  considerable  addition  of  new 
matter  in  the  present  edition  has  in  no  way  diminished  the  lucidity  of 
treatment  which  characterized  the  former." 

"Permit  me  to  congratulate  you  for  having  produced  *  *  * 
a  treatise  on  gas  engine  design  embodying  the_latest  and  most  im- 
proved methods  of  the  art." 

This  is  what  Power  says: 

"This  is  one  of  the  simplest   and  at  the   same  time  the  clearest 

treatise    on    the    thermodynamics    which    underlie    gas    engine    design 

that  we  have  seen." 

****** 

"The  chapter  on  compressed  air  is  a  marvel  of  lucid  explanation 
and  comprehensiveness. 

"The  method  of  obtaining  compression  temperatures  and  calcu- 
lating *  *  volumes  and  pressures  produce  formulas  which 
almost  make  mental  calculation  possible. 

"The  matter  on  gas  engine  design  proper  shows  the  derivation 
and  application  of  formulas  used  in  proportioning  the  principal  parts 
of  the  engine. 

"The  preface  states  that  the  work  is  intended  for  a  reference  by 
busy  men,  and  in  such  a  capacity  it  certainly  is  a  success.  It  is  more 
than  this,  however,  and  students  of  the  subject  and  any  interested  in 
the  subject  will  find  it  intensely  practical  as  well  as  instructive." 

"POWER." 
Issue  of  September.  1903. 

"Contains  *       *       work    that    is    of  unusual   merit." 

"MINING  AND  SCIENTIFIC  PRESS," 

San  Francisco,  Cal. 

"The  book  is  free  from  much  of  the  mystery  which  has  sometimes 
been  made  to  surround  the  design  of  the  gas  engine,  and  the  treat- 
ment of  the  adiabatic  curve  for  gases  is  handled  without  the  use  of 
the  differential  calculus,  which  is  a  large  advance  over  everything 
heretofore  attempted." 

"THE   ENGINEER," 
Chicago,  October  15.  1903. 


PRESS  NOTICES.  163 

"It  is  not  easy  to  suggest  how  the  work  of  the  author  could  have 
been  better  done  in  any  respect,  and  all  who  have  to  do  with  gas  or 
oil  engines  should  be  glad  to  obtain  the  book,  and  none  can  well  fail 
to  appreciate  it." 

'THE   AMERICAN   MACHINIST." 

"The  best  brief  treatise  of  the  subject  extant." 

STANLEY   H.   MOORE,   M.   E., 
Director  Manual  Training  Department  of  the 

Manual   Training   High    School,   Kansas  City,   Mo. 

'■Really  valuable  work." 

PROF.   LUCIEN  E.  PICOLET, 
Department   of   Mechanical   Engineering, 

I'niversity  of  Pennsylvania. 

"Leading  formulae." 

PARSELL  &  WEED, 
Gas  Engine  Construction. 

"It  is  the  first  practical  work  of  its  kind  I  have  been  able  to  get." 

ARTHUR  C.  ISBELL, 
'  474  Seaview  Ave..  Bridgeport,  Conn. 

I  wish  also  to  tliaiik  ^^Ir.  F.  L.  P^iraute  for  the  very 
kind  notice  in  his  hook,  "The  How  and  Wliy  of  the  Auto- 
mobile. ' ' 

Mr.  Hvler  T.  AVhite  has  also  kindly  given  me  credit  for 
work  used  by  him. 

Professor  Lucke,  in  his  leading  and  standard  work  on 
"Gras  Engine  Design,"  has  done  me  the  honor  to  use 
matter  that  I  suppose  I  originated,  and  that  had  in'ev- 
iously  been  published  over  my  signature. 


LETTERS. 


Law   OflBces   of 
Specialty,  R.  A.  PARKER 

PATENTS,  PARKER     &     BURTON,  C.  F.  BURTOX 

TRADE  MARKS,       603-607  Moffat  Building, 
COPYRIGHTS.  Telephone  Main  310 

Detroit,  Mich.,  May  29th,  1908. 
Mr.  Elliott  J.  Stoddard, 

Detroit,  Mich. 

Dear  Mr.  Stoddard  :  I  am  pleased  to  express  to  you  my  high  opinion 
of  your  capacity  for  careful,  critical,  and  accurate  analysis  of  the 
claims  of  patents,  and  of  the  components  of  mechanical  devices.  Also 
my  high  opinion  of  your  knowledge  and  careful  analyses  of  chemical 
problems,  many  of  which  problems,  both  mechanical  and  chemical, 
I  have  placed  before  you  for  solution  in  the  last  six  or  seven  years. 
My  experience  with  you  has  been  that  you  are  very  unwilling  to  ex- 
press an  opinion  until  you  know  the  facts  on  which  it  is  to  be  founded, 
and  that  when  the  facts  are  thoroughly  studied  out,  and  are  fully 
comprehended,  your  opinions  have  almost  invariably  been  accurate, 
not  only  in  my  opinion,  but,  so  far  as  I  have  used  them,  have  been 
sustained  by  the  judges  and  courts  who  have  subsequently  considered 
the  same  matters.  As  an  Expert!  I  consider  you  a  very  painstaking, 
careful,  and  accurate  examiner,  and  more  than  this,  I  have  found 
that  you  have  the  ability  to  explain  in  very  clear  and  comprehensible 
language  the  opinions  which  you  have  formed,  making  your  testimony 
extremely  valuable  and  useful. 

Very   respectfully, 

CHARLES    F.    BURTOX 


LETTERS.  165 

From  Mr.  V.  H.  Lockwood,  Lecturer  on  Patent  Law  and  Trade- 
marks, Indiana  University. 

V.     H.     LOCKWOOD, 

Counsellor  at   Law, 
415-418  Lemcke  Building. 

Indianapolis,  Aug.  4th,  1906. 
Patent  and  Trademark  Law 

Mr.  Elliott  J.  Stoddard, 
Detroit,   Mich. 
Dear    Sir  :     I    beg    to    acknowledge    the    receipt    of    your    testimony 
with    your    accompanying    suggestions.     I    also    wish   to    express    my 
appreciation   of   your   services,   as   I   never   had   a   more   satisfactory 
expert   than   you   proved  to   be. 

I   enclose   herewith  a  check  from   the   Anderson   Tool   Co.   for   the 
amount  of  your  bill. 

Yours  truly, 

V.   H.   LOCKWOOD. 


To  get  the  experience  and  have  the  benefit  of  instruction 
from  one  of  the  most  experienced  and  skillful  Chemists  of  the 
State,  I  recently  took  a  course  in  Chemical  Analysis  under 
Professor  Allen.  The  final  clause  of  the  following  testimonial 
was  unsolicited,  and  I  value  it  as  the  opinion  of  one  whose 
judgment  I  believe  worthy  of  respect. 


Sf troU  0rljool  of  (EIifmiBtrg  txtxh  pi|armari| 

Srtmit.  lllirtitsan 
laboratories: 

DiTBoiT  COLLEGE  NOW  ASSOCIATION  INSTITUTE 

OF    MEDICtNC     BLDG. 

25  April,    '08. 
To  Whom  It  May  Concern: 

Mr.  E.  J.  Stoddard  studied  Chemistry  and  Physics  in  the  labora- 
tories of  the  above  School;  and  it  gives  me  pleasure  to  say  that  he 
not  only  possesses  a  fair  knowledge  of  these  sciences,  but  also  the 
power  to  apply  his  knowledge  to  comprehend  more  complex  problems 
when  presented  to  him. 

W.  H.  ALLEN,  Ph.  G., 
Prof.  Chemistry  Dj  S.  of  Chemistry  and  Pharmacy. 


